Bill Goodwine's Wiki - User contributions [en]

Talk:KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007)

2010-04-14T11:44:39Z

Kevin: /* Kevin */ new section

==Courtney==
Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the “teaching, suggestion, or motivation” test (TSM test), under which a patent claim is only proved obvious if “some motivation or suggestion to combine the prior art teachings” can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. See, e.g., Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1323-1324 (C.A.Fed.1999). KSR challenges that **1735 test, or at least its application in this case. See 119 Fed.Appx. 282, 286-290 (C.A.Fed.2005). Because the Court of Appeals addressed the question of obviousness in a manner contrary to § 103 and our precedents, we granted certiorari, 547 U.S. ----, 126 S.Ct. 2965, 165 L.Ed.2d 949 (2006). We now reverse.

The District Court determined, in light of the expert testimony and the parties' stipulations, that the level of ordinary skill in pedal design was “ ‘an undergraduate degree in mechanical engineering (or an equivalent amount of industry experience) [and] familiarity with pedal control systems for *413 vehicles.’ ” 298 F.Supp.2d, at 590. The court then set forth the relevant prior art, including the patents and pedal designs described above.

The flaws in the analysis of the Court of Appeals relate for the most part to the court's narrow conception of the obviousness inquiry reflected in its application of the TSM test. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the **1742 patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under § 103. One of the ways *420 in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

KSR provided convincing evidence that mounting a modular sensor on a fixed pivot point of the Asano pedal was a design step well within the grasp of a person of ordinary skill in the relevant art. Its arguments, and the record, demonstrate that claim 4 of the Engelgau patent is obvious. In rejecting the District Court's rulings, the Court of Appeals*428 analyzed the issue in a narrow, rigid manner inconsistent with § 103 and our precedents. The judgment of the Court of Appeals is reversed, and the case remanded for further proceedings consistent with this opinion.

== Kevin ==

Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”

Neither the enactment of § 103 nor the analysis in Graham disturbed this Court's earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art . For over a half century, the Court has held that a “patent for a combination *416 which only unites old elements with no change in their respective functions ... obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men.” Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.

When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.

Following these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement. *418 Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having **1741 ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.

As is clear from cases such as Adams, a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity *419 will be combinations of what, in some sense, is already known.

Helpful insights, however, need not become rigid and mandatory formulas; and when it is so applied, the TSM test is incompatible with our precedents. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

Talk:Alza Corp. v. Mylan Laboratories, 464 F.3d 1286, (2006)

2010-04-14T11:22:43Z

Kevin: /* Kevin */ new section

==Courtney==

The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, the Board must provide some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. The requirement of such an explanation is consistent with governing obviousness law ....

A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as “the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references.... The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be *1291 solved as a whole would have suggested to those of ordinary skill in the art.” However, rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness. This requirement is as much rooted in the Administrative Procedure Act [for our review of Board determinations], which ensures due process and non-arbitrary decisionmaking, as it is in § 103.

Likewise, we find no error in the district court's consideration of secondary indicia of obviousness. We therefore affirm its legal conclusion of obviousness, finding the district court to have correctly held that Mylan met its burden of overcoming the presumption of validity that attaches to an issued patent.

We therefore affirm the district court's finding of noninfringement. In so doing we explicitly reject Alza's suggestion that the district court erred in failing to specifically state that not only did it find Alza's plasma concentration data and its “ in vitro ” data to be inadequate in isolation, but that it had also found the data to be inadequate in combination. Even if we were to entertain the suggestion that the district court was in fact unfamiliar with the basic precept that it is the totality of the evidence that it must consider in making factual determinations, we would merely conclude that where as here, if each of two pieces of evidence, assessed separately, is severely inadequate to support a proposition, when their probative values are tallied, they still fall short. While it is possible to envision cases in which two pieces of evidence may create great probative value synergistically, this is not one of those cases.

In conclusion, we affirm the judgment of the district court that the asserted claims of the '355 patent were invalid, and that notwithstanding, the patent was not infringed.

== Kevin ==

As for obviousness, a claimed invention is unpatentable if the differences between it and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985 (Fed.Cir.2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, 86 S.Ct. 684, 15 L.Ed.2d 545, (1966)). Obviousness is a question of law, reviewed de novo, based upon underlying factual questions which are reviewed for clear error following a bench trial. Ruiz v. A.B. Chance Co., 357 F.3d 1270, 1275 (Fed.Cir.2004). These “underlying factual inquiries includ[e]: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness.” In re Dembiczak, 175 F.3d 994, 998 (Fed.Cir.1999). Similarly, “[t]he presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact,” In re Gartside, 203 F.3d 1305, 1316 (Fed.Cir.2000); accord Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1348 (Fed.Cir.2000), as is the presence or absence of a “reasonable expectation of success” from making such a combination, Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.Cir.2006).

In Graham, the Court held that that the obviousness analysis begins with several basic factual inquiries: “[ (1) ] the scope *1290 and content of the prior art are to be determined; [ (2) ] differences between the prior art and the claims at issue are to be ascertained; and [ (3) ] the level of ordinary skill in the pertinent art resolved.”

A suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art, as “the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references.... The test for an implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be *1291 solved as a whole would have suggested to those of ordinary skill in the art.”

As an initial matter, it is essential to recognize that, as we have explained above, under our non-rigid “motivation-suggesting-teaching” test, a suggestion to combine need not be found in the prior art. See Cross Med. Prods., 424 F.3d at 1322 (“[T]he motivation to combine need not be found in prior art references, but equally can be found in the knowledge generally available to one of ordinary skill in the art ....”). Accordingly, where the testimony of an expert witness is relevant to determining the knowledge that a person of ordinary skill in the art would have possessed at a given time, this is one kind of evidence that is pertinent to our evaluation of a prima facie case of obviousness.

Far from teaching away or detracting from the weight of Dr. Amidon's testimony, these prior art references, taken as a whole, are entirely consistent with the finding that in 1995 a person of ordinary skill in the art would have expected a general, albeit imperfect, correlation between a drug's lipophilicity and its colonic absorptivity.

Talk:Winner International Royalty Co. v. Wang, 202 F.3d 1340 (2000)

2010-04-14T11:10:37Z

Kevin: /* Kevin */ new section

==Courtney==

The key issue tried was the presence or absence of sufficient proof of a motivation to combine the four prior art references. The Board had found that one skilled in the art (1) “would have considered Johnson's dead-bolt-type locking device to be disadvantageous compared to the Moore and WuROC devices to the extent that Johnson requires a key for setting in position and adjusting the device,” and (2) “would have been motivated to make Johnson easier to use, albeit less secure, by replacing the dead-bolt mechanism” of Johnson with a suitable self-locking ratcheting mechanism. The district court found that these factual findings were “clearly erroneous” and found that adequate motivation to combine the references was not shown. See Winner, 11 F.Supp.2d at 23-24, 48 USPQ2d at 1143-44. The district court also found that Winner established commercial success resulting from the improvement claimed in the '047 patent, even though it held such a finding immaterial in light of Wang's failure to establish a prima facie case of obviousness. See id. Accordingly, the district court held that on this record the inventions of claims 2 and 4 of the '047 patent would not have been obvious and overturned the Board's decision as to those claims. See id. at 25, 48 USPQ2d at 1145.

The issue before us is whether the scope of the evidence admitted by the district court was sufficient to require a complete trial de novo, or whether the district court was instead required to give deference to some or all of the Board's findings of fact. Although our precedent makes clear that a de novo trial is appropriate in some circumstances in actions under both section 146 and the parallel provisions in 35 U.S.C. § 145, it does not make clear exactly what those circumstances are. The statutory provisions themselves offer little guidance-section 146 only refers to “further testimony” which may be offered in the district court, while section 145 is completely silent about evidence. See 35 U.S.C. § 146; 35 U.S.C. § 145. In Zurko, the Supreme Court, in passing, noted the settled law that in a section 145 action a disappointed applicant may present evidence*1346 that it did not present to the Board, and that the “presence of such new or different evidence makes a factfinder of the district judge.” 119 S.Ct. at 1824 (emphasis added). Interpreting both sections, we have referred to the ability to present “new testimony” or “proffered testimony” or “additional evidence.” Conservolite, 21 F.3d at 1102, 30 USPQ2d at 1629 (“new testimony”); Case, 730 F.2d at 752, 221 USPQ at 202 (finding that section 146 “authorizes the district court to accept all proffered testimony on issues raised by the parties during the proceedings below or by the board's decision.”); Gould, 822 F.2d at 1079, 3 USPQ2d at 1305 (“[A]dditional evidence is permitted in a civil action under section 145, allowing the district court to make de novo fact findings.”); Fregeau v. Mossinghoff, 776 F.2d 1034, 1038, 227 USPQ 848, 851 (Fed.Cir.1985) (using “additional evidence” and “new evidence” interchangeably); cf. Newman v. Quigg, 877 F.2d 1575, 1579, 11 USPQ2d 1340, 1343 (Fed.Cir.1989) (“A district court action under 35 U.S.C. § 145 is a de novo determination of patentability. It is not limited to the record before the PTO.”). It is not clear from these cases, however, when evidence is “new or different” or “additional” so that trial de novo is required.

The dispute here focuses on the combinability of the prior art. When an obviousness determination is based on multiple prior art references, there must be a showing of some “teaching, suggestion, or reason” to combine the references. Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1579, 42 USPQ2d 1378, 1383 (Fed.Cir.1997) (also noting that the “absence of such a suggestion to combine is dispositive in an obviousness determination”). Whether motivation to combine the references was shown we hold a question of fact. See In re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed.Cir.1999) (“[P]articular factual findings regarding the suggestion, teaching, or motivation to combine serve a number of important purposes ....”) (emphasis added); Monarch Knitting, 139 F.3d at 881-83, 886, 45 USPQ2d at 1982, 1985 (treating motivation to combine issue as part of the scope and content of the prior art and holding that genuine issues of fact existed as to whether one of ordinary skill in the art would have been motivated to combine the references in question).

The district court did not clearly err in its findings of fact with respect to its obviousness analysis and did not err in concluding that the invention of the '047 patent would not have been obvious. In addition, the district court did not abuse its discretion in admitting testimony and documents or in refusing to transfer the *1353 case. Accordingly, the judgment of the district court is AFFIRMED.

== Kevin ==

The key issue tried was the presence or absence of sufficient proof of a motivation to combine the four prior art references. The Board had found that one skilled in the art (1) “would have considered Johnson's dead-bolt-type locking device to be disadvantageous compared to the Moore and WuROC devices to the extent that Johnson requires a key for setting in position and adjusting the device,” and (2) “would have been motivated to make Johnson easier to use, albeit less secure, by replacing the dead-bolt mechanism” of Johnson with a suitable self-locking ratcheting mechanism. The district court found that these factual findings were “clearly erroneous” and found that adequate motivation to combine the references was not shown. See Winner, 11 F.Supp.2d at 23-24, 48 USPQ2d at 1143-44. The district court also found that Winner established commercial success resulting from the improvement claimed in the '047 patent, even though it held such a finding immaterial in light of Wang's failure to establish a prima facie case of obviousness. See id. Accordingly, the district court held that on this record the inventions of claims 2 and 4 of the '047 patent would not have been obvious and overturned the Board's decision as to those claims. See id. at 25, 48 USPQ2d at 1145.

Obviousness is a question of law based on underlying factual inquiries including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the prior art and the claimed invention; and (4) extent of any objective indicia of non-obviousness.

[11] Headnote Citing References The district court found that there was no motivation to combine Johnson with the ratcheting mechanism of Moore because (1) there was no apparent disadvantage to the dead-bolt mechanism of Johnson, and therefore the motivation to combine would not stem from the “nature of the problem” facing one of ordinary skill in the art, because no “problem” was perceived; and (2) Johnson's written description taught away from the use of Moore. See Winner, 11 F.Supp.2d at 23, 48 USPQ2d at 1143-44. “What a reference teaches and whether it teaches toward or away from the claimed invention are questions of fact.” In re Bell, 991 F.2d at 784, 26 USPQ2d at 1531.

Because the district court did not clearly err in finding that one of ordinary skill would not be motivated to combine Johnson and Moore, the district court correctly concluded that Wang did not establish a prima facie case of obviousness by clear and convincing evidence. See In re Dance, 160 F.3d at 1343, 48 USPQ2d at 1637.\

It is presumed that Winner established a nexus between its commercial sales of the Super Club, the Club GL and Ultra Club and the patented features because they embody the disclosure of the '047 improvement patent. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571, 41 USPQ2d 1641, 1647 (Fed.Cir.1997) (“When a patentee can demonstrate commercial success, usually shown by significant sales in a relevant market, and that the successful product is the invention disclosed and claimed in the patent, it is presumed that the commercial success is due to the patented invention.”).

Talk:Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)

2010-03-24T10:24:35Z

Kevin:

== Maura ==

It is well settled in this court that a party seeking a preliminary injunction
must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest.

It is important to keep in mind that the issue before us is not who should ultimately be held to have title to the patent, but whether, in view of the state of the title, it can be said that FilmTec has a reasonable likelihood of success on the merits of that issue, sufficient to warrant the grant of the preliminary injunction.

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,3 they are by definition personal property.4 While early cases have pointed to the myriad ways in which patent rights--that is, property in patents--are closer in analogy to real than to personal property,5 the statutes establish as a matter of law that patents today have the attributes of personal property.6 And 35 U.S.C. Sec.261 makes clear that an application for patent as well as the patent itself may be assigned.7 Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under Sec. 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. Sec. 1498 (1988).

Because of the district court's view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

C.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.
Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

==Courtney==

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. § 1498 (1988).

The question of FilmTec's right to maintain the action against Allied should not be confused with the question of whether Allied could defend by arguing that title to the patent was in a third party-the Government-and therefore Allied has a good defense against any infringement suit. The plea in jus tertii (title in a third person) as it was known at common law was held in some early cases to be a good defense to a possessory action, although more recent cases reject the defense and allow recovery on a prior possession.[9] But the issue here is not whether title lies in the Government or some other third party; it is rather whether FilmTec has made a sufficient showing to establish reasonable likelihood of success on the merits, which includes a showing that title to the patent and the rights thereunder are in FilmTec.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

== Kevin ==

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532.
Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.
Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

Talk:Filmtec Corp. v. Allied-Signal Inc., 939 F.2d 1568 (1991)

2010-03-24T10:24:04Z

Kevin: /* Kevin */ new section

== Maura ==

It is well settled in this court that a party seeking a preliminary injunction
must establish a right thereto in light of four factors: 1) a reasonable likelihood of success on the merits; 2) irreparable harm; 3) the balance of hardships tipping in favor of the requesting party; and 4) that the issuance of an injunction is in the public interest.

It is important to keep in mind that the issue before us is not who should ultimately be held to have title to the patent, but whether, in view of the state of the title, it can be said that FilmTec has a reasonable likelihood of success on the merits of that issue, sufficient to warrant the grant of the preliminary injunction.

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,3 they are by definition personal property.4 While early cases have pointed to the myriad ways in which patent rights--that is, property in patents--are closer in analogy to real than to personal property,5 the statutes establish as a matter of law that patents today have the attributes of personal property.6 And 35 U.S.C. Sec.261 makes clear that an application for patent as well as the patent itself may be assigned.7 Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under Sec. 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. Sec. 1498 (1988).

Because of the district court's view of the title issue, no specific findings were made on either of these questions. As a result, we do not know who held legal title to the invention and to the patent application and therefore we do not know if FilmTec could make a sufficient legal showing to establish the likelihood of success necessary to support a preliminary injunction.

C.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.
Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

==Courtney==

Since property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532.

Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign. In this case, if Cadotte granted MRI rights in inventions made during his employ, and if the subject matter of the '344 patent was invented by Cadotte during his employ with MRI, then Cadotte had nothing to give to FilmTec and his purported assignment to FilmTec is a nullity. Thus, FilmTec would lack both title to the '344 patent and standing to bring the present action. See 28 U.S.C. § 1498 (1988).

The question of FilmTec's right to maintain the action against Allied should not be confused with the question of whether Allied could defend by arguing that title to the patent was in a third party-the Government-and therefore Allied has a good defense against any infringement suit. The plea in jus tertii (title in a third person) as it was known at common law was held in some early cases to be a good defense to a possessory action, although more recent cases reject the defense and allow recovery on a prior possession.[9] But the issue here is not whether title lies in the Government or some other third party; it is rather whether FilmTec has made a sufficient showing to establish reasonable likelihood of success on the merits, which includes a showing that title to the patent and the rights thereunder are in FilmTec.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.

In our view of the title issue, it cannot be said on this record that FilmTec has established a reasonable likelihood of success on the merits. It is thus unnecessary for us to consider the other issues raised on appeal concerning the propriety of the injunction. The grant of the preliminary injunction is vacated and the case remanded to the district court to reconsider the propriety of the preliminary injunction in light of the four Chrysler factors and for further proceedings consistent with this opinion.

== Kevin ==

ince property rights in an invention itself could not, under any conventional meaning of the term, be considered real property,[3] they are by definition personal property.[4] While early cases have pointed to the myriad ways in which patent rights-that is, property in patents-are closer in analogy to real than to personal property,[5] the statutes establish as a matter of law that patents today have the attributes of personal property.[6] And 35 U.S.C. § 261 makes clear that an application for patent as well as the patent itself may be assigned.[7] Further, it is settled law that between the time of an invention and the issuance of a patent, rights in an invention may be assigned and legal title to the ensuing patent will pass to the assignee upon grant of the patent. Gayler v. Wilder, 51 U.S. (10 How.) 477, 493, 13 L.Ed. 504 (1850); see 4 A. Deller, Walker on Patents § 334 (1965).

If an assignment of rights in an invention is made prior to the existence of the invention, this may be viewed as an assignment of an expectant interest.[8] An assignment of an expectant interest can be a valid assignment. Mitchell v. Winslow, 17 F.Cas. 527, 531-32 (C.C.D.Me.1843) (non-existing [personal] property may be the subject of valid assignment); see generally Contract Rights as Commercial Security: Present and Future Intangibles, 67 Yale L.J. 847, 854 n. 27 (1958). In such a situation, the assignee holds at most an equitable title. Mitchell v. Winslow, 17 F.Cas. at 532.
Once the invention is made and an application for patent is filed, however, legal title to the rights accruing thereunder would be in the assignee (subject to the rights of a subsequent purchaser under § 261), and the assignor-inventor would have nothing remaining to assign.

It is well established that when a legal title holder of a patent transfers his or her title to a third party purchaser for value without notice of an outstanding equitable claim or title, the purchaser takes the entire ownership of the patent, free of any prior equitable encumbrance. Hendrie v. Sayles, 98 U.S. 546, 549, 25 L.Ed. 176 (1879). This is an application of the common law bona fide purchaser for value rule.
Section 261 of Title 35 goes a step further. It adopts the principle of the real property recording acts, and provides that the bona fide purchaser for value cuts off the rights of a prior assignee who has failed to record the prior assignment in the Patent and Trademark Office by the dates specified in the statute. Although the statute does not expressly so say, it is clear that the statute is intended to cut off prior legal interests, which the common law rule did not.

Talk:U.S. v. Univis Lens Co., 316 U.S. 241 (1942)

2010-03-24T10:20:57Z

Kevin: /* Kevin */ new section

== Maura ==

The court thought that without the granted license the final step in finishing the lens would infringe the patent and concluded that for this reason the Corporation could condition its licenses upon the maintenance by the licensee of the prescribed retail price. See United States v. General Electric Co., 272 U.S. 476, 47 S.Ct. 192, 71 L.Ed. 362. But it held that the prescription retailer licenses are unlawful because their restrictions upon the resale of the finished product are not within the patent monopoly and are proscribed by the Sherman Act.

The court accordingly limited the relief which it granted to an injunction restraining respondents from carrying out or enforcing the restrictive provisions of the prescription retailer licenses and the fair trade agreements, and from using its licensing system—as has been done in one instance—as the means of preventing a particular competitor from manufacturing and distributing multifocal lens blank similar in appearance to those produced by the Lens Company.

An incident to the purchase of any article, whether patented or unpatented, is the right to use and sell it, and upon familiar principles the authorized sale of an article which is capable of use only in practicing the patent is a relinquishment of the patent monopoly with respect to the article sold. Leitch Mfg. Co. v. Barber Co., 302 U.S. 458, 460, 461, 58 S.Ct. 288, 289, 82 L.Ed. 371; B. B. Chemical Co. v. Ellis, 314 U.S. 495, 62 S.Ct. 406, 86 L.Ed. —-. Sale of a lens blank by the patentee or by his licensee is thus in itself both a complete transfer of ownership of the blank, which is within the protection of the patent law, and a license to practice the final stage of the patent procedure. In the present case the entire consideration and compensation for both is the purchase price paid by the finishing licensee to the Lens Company. We have no question here of what other stipulations, for royalties or otherwise, might have been exacted as a part of the entire transaction, which do not seek to control the disposition of the patented article after the sale. The question is whether the patentee or his licensee, no longer aided by the patent, may lawfully exercise such control.

The declared purpose of the patent law is to promote the progress of science and the useful arts by granting to the inventor a limited monopoly, the exercise of which will enable him to secure the financial rewards for his invention. Constitution of the United States, Art. I, § 8, Cl. 8; 35 U.S.C. §§ 31, 40, 35 U.S.C.A. §§ 31, 40. The full extent of the monopoly is the patentee's 'exclusive right to make use, and vend the invention or discovery'. The patentee may surrender his monopoly in whole by the sale of his patent or in part by the sale of an artile embodying the invention. His monopoly remains so long as he retains the ownership of the patented article. But sale of it exhausts the monopoly in that article and the patentee may not thereafter, by virtue of his patent, control the use or disposition of the article. Bloomer v. McQuewan, 14 How. 539, 549, 550, 14 L.Ed. 532; Adams v. Burke, 17 Wall. 453, 21 L.Ed. 700; Hobbie v. Jennison, 149 U.S. 355, 13 S.Ct. 879, 37 L.Ed. 766. Hence the patentee cannot control the resale price of patented articles which he has sold, either by resort to an infringement suit, or, consistently with the Sherman Act (unless the Miller-Tydings Act applies), by stipulating for price maintenance by his vendees.

We think that all the considerations which support these results lead to the conclusion that where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article. The reward he was demanded and received is for the article and the invention which it embodies and which his vendee is to practice upon it. He has thus parted with his right to assert the patent monopoly with respect to it and is no longer free to control the price at which it may be sold either in its unfinished or finished form.

The first vending of any article manufactured under a patent puts the article beyond the reach of the monopoly which that patent confers. Whether the licensee sells the patented article in its completed form or sells it before completion for the purpose of enabling the buyer to finish and sell it, he has equally parted with the article, and made it the vehicle for transferring to the buyer ownership of the invention with respect to that article. To that extent he has parted with his patent monopoly in either case, and has received in the purchase price every benefit of that monopoly which the patent law secures to him. If he were permitted to control the price at which it could be sold by others he would extend his monopoly quite as much in the one case as in the other, and he would extend it beyond the fair meaning of the patent statutes and the construction which has hitherto been given to them.

The Miller-Tydings Act provides that nothing in the Sherman Act 'shall render illegal, contracts or agreements prescribing minimum prices for the resale of a commodity which bears, or the label or container of which bears, the trade mark, brand, or name of the producer or distributor of such commodity and which is in free and open competition with commodities of the same general class produced or distributed by others * * *.' whenever such agreements are lawful where the resale is made.

Affirmed in part, and reversed in part and remanded with directions.

==Courtney==

We think that all the considerations which support these results lead to the conclusion that where one has sold an uncompleted article which, because it embodies essential features of his patented invention, is within the protection of his patent, and has destined the article to be finished by the purchaser in conformity to the patent, he has sold his invention so far as it is or may be embodied in that particular article. The reward he was demanded and received is for the article and the invention which it embodies and which his vendee is to practice upon it. He has thus parted with his right to assert the patent monopoly with respect to it and is no longer free to control the price at which it may be sold either in its unfinished or finished form. No one would doubt that if the patentee's licensee had sold the blanks to a wholesaler or finishing retailer, without more, the purchaser would not infringe by grinding and selling them. The added stipulation by the patentee fixing resale prices derives no support from the patent and must stand on the same footing under the Sherman Act as like stipulations with respect to unpatented commodities. Ethyl Gasoline Corp. v. United States, supra.

The first vending of any article manufactured under a patent puts the article beyond the reach of the monopoly which that patent confers. Whether the licensee sells the patented article in its completed form or sells it before completion for the purpose of enabling the buyer to finish and sell it, he has equally parted with the article, and made it the vehicle for transferring to the buyer ownership of the invention with respect to that article. To that extent he has parted with his patent monopoly in either case, and has received in the purchase price every benefit of that monopoly which the patent law secures to him. If he were permitted to control the price at which it could be sold by others he would extend his monopoly quite as much in the one case as in the other, and he would extend it beyond the fair meaning of the patent statutes and the construction which has hitherto been given to them.

The price fixing features of appellees' licensing system, which are not within the protection of the patent law, violate the Sherman Act save only as the fair trade agreements may bring them within the Miller-Tydings Act. Agreements for price maintenance of articles moving in interstate commerce are, without more, unreasonable restraints within the meaning of the Sherman Act because they eliminate competition, United States v. Trenton Potteries, 273 U.S. 392, 47 S.Ct. 377, 71 L.Ed. 700, 50 A.L.R. 989; United States v. Socony Vacuum, 310 U.S. 150, 60 S.Ct. 811, 84 L.Ed. 1129, and restrictions imposed by the seller upon resale prices of articles moving in interstate commerce were, until the enactment of the Miller-Tydings Act, 50 Stat. 693, 15 U.S.C.A. s 1 consistently held to be violations of the Sherman Act. Ethyl Gasoline Co. v. United States, supra, 309 U.S., page 457, 60 S.Ct. page 625, 84 L.Ed. 852, and cases cited.

In the contracts the Lens Company is designated as the manufacturer of ‘eye glass lenses' which are distributed and sold under the trade-mark of the manufacturer. But the Lens Company manufactures the blanks and not the finished lenses to which the resale prices apply. It is therefore not the manufacturer of the ‘commodity’ which the licensees sell, and the licensees are not engaged in the ‘resale’ of the same commodity they buy. We find nothing in the language of the Miller-Tydings Act, or in its legislative history to indicate that its provisions were to be so applied to products manufactured in successive stages by different processors that the first would be free to control the price of his successors. The prescribed prices are thus not within the Miller-Tydings exception to the Sherman Act.

Appellees stress the features of their licensing system by which it is said they protect the public interest and their own good will by the selection as licensees of those who are specially skilled and competent to render the service which they undertake. But if we assume that such restrictions might otherwise be valid, cf. Fashion Guild v. Trade Commission, 312 U.S. 457, 467, 668, 61 S.Ct. 703, 707, 85 L.Ed. 949, these features are so interwoven with and identified with the price restrictions which are the core of the licensing system that the case is an appropriate one for the suppression of the entire licensing scheme even though some of its features, independently established, might have been ued for lawful purposes. Ethyl Gasoline Corp. v. United States, supra, 309 U.S. page 461, 60 S.Ct. page 627, 84 L.Ed. 852. The injunction of the district court will therefore be continued, and extended so as to suppress all the license contracts and the maintenance of the licensing system which appellees have established, other than the Corporation's license to the Lens Company. The judgment in No. 856 is affirmed. The judgment in No. 855 is reversed, and both cases are remanded to the district court for the entry of an appropriate decree in conformity to this opinion.

== Kevin ==

The Government has not put in issue the validity of the lens patents, but argues that their scope does not extend beyond the structure of the lens blanks and consequently affords no basis for the Corporation's restrictions on the sale of the finished lenses which the wholesalers and finishing retailers fashion from blanks purchased from the Lens Company. It insists that the novel features of the invention do not include more than the combination of shape, size and arrangement of the described pieces of glass when they are fused into the blank; that the grinding and polishing of the blank involve no practice and add no feature not common to the finishing and ‘fitting’ of other types of multifocal lenses which are not covered by the patents; and that their scope cannot be lawfully extended to a procedure not in itself novel merely because it is applied to an article which embodies the only novel features of the alleged invention, and has by the sale become a lawful subject of commerce.

The declared purpose of the patent law is to promote the progress of science and the useful arts by granting to the inventor a limited monopoly, the exercise of which will enable him to secure the financial rewards for his invention. Constitution of the United States, Art. I, s 8, Cl. 8; 35 U.S.C. ss 31, 40, 35 U.S.C.A. ss 31, 40. The full extent of the monopoly is the patentee's ‘exclusive right to make use, and vend the invention or discovery’. The patentee may surrender his monopoly in whole by the sale of his patent or in part by the sale of an artile embodying the invention. His monopoly remains so long as he retains the ownership of the patented article. But sale of it exhausts the monopoly in that article and the patentee may not thereafter, by virtue of his patent, control the use or disposition of the article. Bloomer v. McQuewan, 14 How. 539, 549, 550, 14 L.Ed. 532; Adams v. Burke, 17 Wall. 453, 21 L.Ed. 700; Hobbie v. Jennison, 149 U.S. 355, 13 S.Ct. 879, 37 L.Ed. 766. Hence the patentee cannot control the resale price of patented articles which he has sold, either by resort to an infringement suit, or, consistently with the Sherman Act (unless the Miller-Tydings Act applies), by stipulating for price maintenance by his vendees. Bauer & Cie v. O'Donnell, 229 U.S. 1, 33 S.Ct. 616, 57 L.Ed. 1041, 50 L.R.A.,N.S., 1185, Ann.Cas.1915A, 150; Boston Store v. American Graphophone Co., 246 U.S. 8, 38 S.Ct. 257, 62 L.Ed. 551, Ann.Cas.1918C, 447; Straus v. Victor Talking Machine Co., 243 U.S. 490, 37 S.Ct. 412, 61 L.Ed. 866, L.R.A.1917E, 1196, Ann.Cas.1918A, 955; Ethyl Gasoline Corp. v. United States, 309 U.S. 436, 456, 457, 60 S.Ct. 618, 625, 84 L.Ed. 852, and cases cited.

Our decisions have uniformly recognized that the purpose of the patent law is fulfilled with respect to any particular article when the patentee has received his reward for the use of his invention by the sale of the article, and that once that purpose is realized the patent law affords no basis for restraining the use and enjoyment of the thing sold. Adams v. Burke, supra, 17 Wall. page 456, 21 L.Ed. 700; Keeler v. Standard Folding Bed Co.

Talk:Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908)

2010-03-24T10:17:18Z

Kevin: /* Kevin */ new section

== Maura ==

It is contended that this power to control further sales is given by statute to the owner of such a copyright in conferring the sole right to ‘vend’ a copyrighted book.

‘There are such wide differences between the right of multiplying and vending copies of a production protected by the copyright statute and the rights secured to an inventor under the patent statutes, that the cases which relate to the one subject are not altogether controlling as to the other.’

The learned counsel for the appellant in this case, in the argument at bar, disclaims relief because of any contract, and relies solely upon the copyright statutes, and rights therein conferred. The copyright statutes ought to be reasonably construed, with a view to effecting the purposes intended by Congress. They ought not to be unduly extended by judicial construction to include privileges not intended to be conferred, nor so narrowly construed as to deprive those entitled to their benefit of the rights Congress intended to grant.

In order to secure this right it was provided in that statute, as it has been in subsequent ones, that the authors of books, their executors, administrators, or assigns, shall have the ‘sole right and liberty of printing, reprinting, publishing, and vending’ such book for a term of years, upon complying with the statutory conditions set forth in the act as essential to the acquiring of a valid copyright. Each and all of these statutory rights should be given such protection as the act of Congress requires, in order to secure the rights conferred upon authors and others entitled to the benefit of the act. Let us see more specifically what are the statutory rights, in this behalf, secured to one who has complied with the provisions of the law and become the owner of a copyright. They may be found in §§ 4952, 4965, and 4970 of the Revised Statutes of the United States, and are as follows:

‘Sec. 4952. Any citizen of the United States or resident therein, who shall be the author, inventor, designer, or proprietor of any book, map, chart, dramatic or musical composition, engraving, cut, print, or photograph or negative thereof, or of a painting, drawing, chromo, statute, statuary, and of models or designs intended to be perfected as works of the fine arts, and the executors, administrators, or assigns of any such person, shall, upon complying with the provisions of this chapter, have the sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing, and vending the same.’ U. S. Comp. Stat. 1901, p. 3406.

‘Sec. 4965. If any person, after the recording of the title of any map, chart, musical composition, print, cut, engraving, or photograph, or chromo, or of the description of any painting, drawing, statue, statuary, or model or design intended to be perfected and executed as a work of the fine arts, as provided by this chapter, shall, within the term limited, and without the consent of the proprietor of the copyright first obtained in writing, signed in presence of two or more witnesses, engrave, etch, work, copy, print, publish, or import, either in whole or in part, or by varying the main design with intent to evade the law, or, knowing the same to be so printed, published, or imported, shall sell or expose to sale any copy of such map or other article, as aforesaid, he shall forfeit to the proprietor all the plates on which the same shall be copied, and every sheet thereof, either copied or printed, and shall further forfeit one dollar for every sheet of the same found in his possession, either printing, printed, copied, published, imported, or exposed for sale; and in case of a painting, statute, or statuary, he shall forfeit ten dollars for every copy of the same in his possession, or by him sold or exposed for sale, one half thereof to the proprietor and the other half to the use of the United States.’ U. S. Comp. Stat. 1901, p. 3414.

The purchaser of a book, once sold by authority of the owner of the copyright, may sell it again, although he could not publish a new edition of it.

In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract.

To add to the right of exclusive sale the authority to control all future retail sales, by a notice that such sales must be made at a fixed sum, would give a right not included in the terms of the statute, and, in our view, extend its operation, by construction, beyond its meaning, when interpreted with a view to ascertaining the legislative intent in its enactment.

==Courtney==

The present case involves rights under the copyright act. The facts disclose a sale of a book at wholesale by the owners of the copyright, at a satisfactory price, and this without agreement between the parties to such sale obligating the purchaser to control future sales, and where the alleged right springs from the protection of the copyright law alone. It is contended that this power to control further sales is given by statute to the owner of such a copyright in conferring the sole right to ‘vend’ a copyrighted book.

While the nature of the property and the protection intended to be given the inventor or author as the reward of genius or intellect in the production of his book or work of art is to be considered in construing the act of Congress, it is evident that to secure the author the right to multiply copies of his work may be said to have been the main purpose of the copyright statutes. Speaking for this court in Stephens v. Cady, 14 How. 528, 530, 14 L. ed. 528, 529, Mr. Justice Nelson said:

‘The copyright is an exclusive right to the multiplication of the copies, for the benefit of the author or his assigns, disconnected from the plate, or any other physical existence. It is an incorporeal right to print and publish the map; or, as said by Lord Mansfield in Millar v. Taylor, 4 Burr. 2396, ‘a propeety in notion, and has no corporeal, tangible substance.’'

The precise question, therefore, in this case is, Does the sole right to vend (named in § 4952) secure to the owner of the copyright the right, after a sale of the book to a purchaser, to restrict future sales of the book at retail, to the right to sell it at a certain price per copy, because of a notice in the book that a sale at a different price will be treated as an infringement, which notice has been brought home to one undertaking to sell for less than the named sum? We do not think the statute can be given such a construction, and it is to be remembered that this is purely a question of statutory construction. There is no claim in this case of contract limitation, nor license agreement controlling the subsequent sales of the book.

In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract. This conclusion is reached in view of the language of the statute, read in the light of its main purpose to secure the right of multiplying copies of the work,-a right which is the special creation of the statute. True, the statute also secures, to make this right of multiplication effectual, the sole right to vend copies of the book, the production of the author's thought and conception. The owner of the copyright in this case did sell copies of the book in quantities and at a price satisfactory to it. It has exercised the right to vend. What the complainant contends for embraces not only the right to sell the copies, but to qualify the title of a future purchaser by the reservation of the right to have the remedies of the statute against an infringer because of the printed notice of its purpose so to do unless the purchaser sells at a price fixed in the notice. To add to the right of exclusive sale the authority to control all future retail sales, by a notice that such sales must be made at a fixed sum, would give a right not included in the terms of the statute, and, in our view, extend its operation, by construction, beyond its meaning, when interpreted with a view to ascertaining the legislative intent in its enactment.

== Kevin ==

We may say in passing, disclaiming any intention to indicate our views as to what would be the rights of parties in circumstances similar to the present case under the patent laws, that there are differences between the patent and copyright statutes in the extent of the protection granted by them. This was recognized by Judge Lurton, who wrote a leading case on the subject in the Federal courts (Button Fastener Case, supra), for he said in the subsequent case of John D. Park & Sons Co. v. Hartman, 12 L.R.A.(N.S.) 135, 82 C. C. A. 158, 153 Fed. 24:
‘There are such wide differences between the right of multiplying and vending copies of a production protected by the copyright statute and the rights secured to an inventor under the patent statutes, that the cases which relate to the one subject are not altogether controlling as to the other.’

In order to secure this right it was provided in that statute, as it has been in subsequent ones, that the authors of books, their executors, administrators, or assigns, shall have the ‘sole right and liberty of printing, reprinting, publishing, and vending’ such book for a term of years, upon complying with the statutory conditions set forth in the act as essential to the acquiring of a valid copyright. Each and all of these statutory rights should be given such protection as the act of Congress requires, in order to secure the rights conferred upon authors and others entitled to the benefit of the act.

In our view the copyright statutes, while protecting the owner of the copyright in his right to multiply and sell his production, do not create the right to impose, by notice, such as is disclosed in this case, a limitation at which the book shall be sold at retail by future purchasers, with whom there is no privity of contract.

Talk:In Re Bilski, Rader dissenting opinion

2010-03-19T12:53:13Z

Kevin: /* Kevin */ new section

== Maura ==

Thus, the Patent Act from its inception focused patentability on the specific characteristics of the claimed invention-its novelty and utility-not on its particular subject matter category.

Diehr, 450 U.S. at 182, 101 S.Ct. 1048 (citations omitted). Indeed section 101's term “process” contains no hint of an exclusion for certain types of methods. This court today nonetheless holds that a process is eligible only if it falls within certain subsets of “process.” Ironically the Patent Act itself specifically defines “process” without any of these judicial innovations. 35 U.S.C. § 100(b). Therefore, as Diehr commands, this court should refrain from creating new circuitous judge-made tests.

The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of processes but not others. It does not mean “some” or even “most,” but all.

The abstractness and natural law preclusions not only make sense, they explain the purpose of the expansive language of section 101. Natural laws and phenomena can never qualify for patent protection because they cannot be invented at all. After all, God or Allah or Jahveh or Vishnu or the Great Spirit provided these laws and phenomena as humanity's common heritage. Furthermore, abstract ideas can never qualify for patent protection because the Act intends, as section 101 explains, to provide “useful” technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection. The fine print of Supreme Court opinions conveys nothing more than these basic principles. Yet this court expands (transforms? ) some Supreme Court language into rules that defy the Supreme Court's own rule.

In sum, this court today invents several circuitous and unnecessary tests. It should have merely noted that Bilski attempts to patent an abstract idea. Nothing more was needed. Instead this opinion propagates unanswerable questions: What form or amount of “transformation” suffices? When is a “representative” of a physical object sufficiently linked to that object to satisfy the transformation test? (e.g., Does only vital sign data taken directly from a patient qualify, or can population data derived in part from statistics and extrapolation be used?) What link to a machine is sufficient to invoke the “or machine” prong? Are the “specific” machines of Benson required, or can a general purpose computer qualify? What constitutes “extra- solution activity?” If a process may meet eligibility muster as a “machine,” why does the Act “require” a machine link for a “process” to show eligibility? Does the rule against redundancy itself suggest an inadequacy in this complex spider web of tests supposedly “required” by the language of section 101?

Innovation has moved beyond the brick and mortar world. Even this court's test, with its caveats and winding explanations seems to recognize this. Today's software transforms our lives without physical anchors. This court's test not only risks hobbling these advances, but precluding patent protection for tomorrow's technologies. “We still do not know one thousandth of one percent of what nature has revealed to us.” Attributed to Albert Einstein. If this court has its way, the Patent Act may not incentivize, but complicate, our search for the vast secrets of nature. When all else fails, consult the statute.

==Courtney==

This court labors for page after page, paragraph after paragraph, explanation after explanation to say what could have been said in a single sentence: “Because Bilski claims merely an abstract idea, this court affirms the Board's rejection.” If the only problem of this vast judicial tome were its circuitous path, I would not dissent, but this venture also disrupts settled and wise principles of law.

Much of the court's difficulty lies in its reliance on dicta taken out of context from numerous Supreme Court opinions dealing with the technology of the past. In other words, as innovators seek the path to the next tech no-revolution, this court ties our patent system to dicta from an industrial age decades removed from the bleeding edge. A direct reading of the Supreme Court's principles and cases on patent eligibility would yield the one-sentence resolution suggested above. Because this court, however, links patent eligibility to the age of iron and steel at a time of subatomic particles and terabytes, I must respectfully dissent.

Read in context, section 101 gives further reasons for interpretation without innovation. Specifically, section 101 itself distinguishes patent eligibility from the conditions of patentability-providing generously for patent eligibility, but noting that patentability requires substantially more. The language sweeps in “ any new and useful process ... [and] any improvement.” 35 U.S.C. § 101 (emphasis supplied). As an expansive modifier, “any” embraces the broad and ordinary meanings of the term “process,” for instance. The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of processes but not others. It does not mean “some” or even “most,” but all.

Unlike the laws of other nations that include broad exclusions to eligible subject matter, such as European restrictions on software and other method patents, see European Patent Convention of 1973, Art. 52(2)(c) and (3), and prohibitions against patents deemed contrary to the public morality, see id. at Art. 53(a), U.S. law and policy have embraced advances without regard to their subject matter. That promise of protection, in turn, fuels the research that, at least for now, makes this nation the world's innovation leader.

II With all of its legal sophistry, the court's new test for eligibility today does not answer the most fundamental question of all: why would the expansive language of section 101 preclude protection of innovation simply because it is not transformational or properly linked to a machine (whatever that means)? Stated even more simply, why should some categories of invention deserve no protection?

The abstractness and natural law preclusions not only make sense, they explain the purpose of the expansive language of section 101. Natural laws and phenomena can never qualify for patent protection because they cannot be invented at all. After all, God or Allah or Jahveh or Vishnu or the Great Spirit provided these laws and phenomena as humanity's common heritage. Furthermore, abstract ideas can never qualify for patent protection because the Act intends, as section 101 explains, to provide “useful” technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection. The fine print of Supreme Court opinions conveys nothing more than these basic principles. Yet this court expands (transforms?) some Supreme Court language into rules that defy the Supreme Court's own rule.

When considering the eligibility of “processes,” this court should focus on the potential for an abstract claim. Such an abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability. Thus this court would wish to ensure that the claim supplied some concrete, tangible technology for examination. Indeed the hedging claim at stake in this appeal is a classic example of abstractness. Bilski's method for hedging risk in commodities trading is either a vague economic concept or obvious on its face. Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class. In any event, this facially abstract claim does not warrant the creation of new eligibility exclusions.ocess.

The distinction between “phenomena of nature,” “mental processes,” and “abstract intellectual concepts” is not difficult to draw. The fundamental error in that Lab. Corp. dissent is its failure to recognize the difference between a patent ineligible relationship-i.e., that between high homocysteine levels and folate and cobalamin deficiencies-and a patent eligible process for applying that relationship to achieve a useful, tangible, and concrete result-i.e., diagnosis of potentially fatal conditions in patients. Nothing abstract here. Moreover, testing blood for a dangerous condition is not a natural phenomenon, but a human invention.

In sum, this court today invents several circuitous and unnecessary tests. It should have merely noted that Bilski attempts to patent an abstract idea. Nothing more was needed. Instead this opinion propagates unanswerable questions: What form or amount of “transformation” suffices? When is a “representative” of a physical object sufficiently linked to that object to satisfy the transformation test? (e.g., Does only vital sign data taken directly from a patient qualify, or can population data derived in part from statistics and extrapolation be used?) What link to a machine is sufficient to invoke the “or machine” prong? Are the “specific” machines of Benson required, or can a general purpose computer qualify? What constitutes “extra-solution activity?” If a process may meet eligibility muster as a “machine,” why does the Act “require” a machine link for a “process” to show eligibility? Does the rule against redundancy itself suggest an inadequacy in this complex spider web of tests supposedly “required” by the language of section 101?

One final point, reading section 101 as it is written will not permit a flurry of frivolous and useless inventions. Even beyond the exclusion for abstractness, the final clause of section 101-“subject to the conditions and requirements of this title”-ensures that a claimed invention must still satisfy the “conditions and requirements” set forth in the remainder title 35. Id. These statutory conditions and requirements better serve the function of screening out unpatentable inventions than some vague “transformation” or “proper machine link” test.

In simple terms, the statute does not mention “transformations” or any of the other Industrial Age descriptions of subject matter categories that this court endows with inordinate importance today. The Act has not empowered the courts to impose limitations on patent eligible subject matter beyond the broad and ordinary meaning of the terms process, machine, manufacture, and composition of matter. It has instead preserved the promise of patent protection for still unknown fields of invention.

Innovation has moved beyond the brick and mortar world. Even this court's test, with its caveats and winding explanations seems to recognize this. Today's software transforms our lives without physical anchors. This court's test not only risks hobbling these advances, but precluding patent protection for tomorrow's technologies. “We still do not know one thousandth of one percent of what nature has revealed to us.” Attributed to Albert Einstein. If this court has its way, the Patent Act may not incentivize, but complicate, our search for the vast secrets of nature. When all else fails, consult the statute.

== Kevin ==

This court labors for page after page, paragraph after paragraph, explanation after explanation to say what could have been said in a single sentence: “Because Bilski claims merely an abstract idea, this court affirms the Board's rejection.” If the only problem of this vast judicial tome were its circuitous path, I would not dissent, but this venture also disrupts settled and wise principles of law.

Much of the court's difficulty lies in its reliance on dicta taken out of context from numerous Supreme Court opinions dealing with the technology of the past. In other words, as innovators seek the path to the next tech no-revolution, this court ties our patent system to dicta from an industrial age decades removed from the bleeding edge. A direct reading of the Supreme Court's principles and cases on patent eligibility would yield the one-sentence resolution suggested above.

When considering the eligibility of “processes,” this court should focus on the potential for an abstract claim. Such an abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability. Thus this court would wish to ensure that the claim supplied some concrete, tangible technology for examination. Indeed the hedging claim at stake in this appeal is a classic example of abstractness. Bilski's method for hedging risk in commodities trading is either a vague economic concept or obvious on its face.

When considering the eligibility of “processes,” this court should focus on the potential for an abstract claim. Such an abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability. Thus this court would wish to ensure that the claim supplied some concrete, tangible technology for examination. Indeed the hedging claim at stake in this appeal is a classic example of abstractness. Bilski's method for hedging risk in commodities trading is either a vague economic concept or obvious on its face.

One final point, reading section 101 as it is written will not permit a flurry of frivolous and useless inventions.

Innovation has moved beyond the brick and mortar world. Even this court's test, with its caveats and winding explanations seems to recognize this. Today's software transforms our lives without physical anchors. This court's test not only risks hobbling these advances, but precluding patent protection for tomorrow's technologies. “We still do not know one thousandth of one percent of what nature has revealed to us.” Attributed to Albert Einstein. If this court has its way, the Patent Act may not incentivize, but complicate, our search for the vast secrets of nature. When all else fails, consult the statute.

Talk:In Re Bilski, Mayer dissenting opinion

2010-03-19T12:48:55Z

Kevin: /* Kevin */ new section

== Maura ==

The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw (“Bilski”) is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT & T should be overruled.

When drafting the Constitution, the framers were well aware of the abuses that led to the English Statute of Monopolies and therefore “consciously acted to bar Congress from granting letters patent in particular types of business.”

By 1952, when Congress enacted the current Patent Act, it was widely acknowledged that methods of doing business were ineligible for patent protection. See, e.g., Loew's Drive-In Theatres, Inc. v. Park-In Theatres, Inc., 174 F.2d 547, 552 (1st Cir.1949) (“[A] system for the transaction of business ... however novel, useful, or commercially successful is not patentable apart from the means for making the system practically useful, or carrying it out.”); In re Patton, 29 C.C.P.A. 982, 127 F.2d 324 (1942) (noting that “a system of transacting business, apart from the means for carrying out such system” is not patentable); Hotel Sec. Checking Co. v. Lorraine Co., 160 F. 467, 469 (2d Cir.1908) (“A system of transacting business disconnected from the means for carrying out the system is not, within the most liberal interpretation of the term, an art.”); In re Moeser, 27 App. D.C. 307, 310 (1906) (holding that a system for burial insurance contracts was not patentable because “contracts or proposals for contracts, devised or adopted as a method of transacting a particular class of ... business, [are] not patentable as an art”); see also 145 Cong. Rec. H6,947 (Aug. 3, 1999) (statement of Rep. Manzullo) (“Before the State Street Bank and Trust case ... it was universally thought that methods of doing or conducting business were not patentable items.”).

State Street's decision to jettison the prohibition against patenting methods of doing business contravenes congressional intent. Because (1) “the framers consciously acted to bar Congress from granting letters patent in particular types of business,” Comiskey, 499 F.3d at 1375, and (2) Congress evidenced no intent to modify the long-established rule against business method patents when it enacted the 1952 Patent Act, it is hard to fathom how the issuance of patents on business methods can be supported.

To the contrary, the language supports the opposite view: a person may have “invented” anything under the sun, but it is “not necessarily patentable” unless the statutory requirements for patentability have been satisfied. Thus, the legislative history oft-cited to support business method patents undercuts, rather than supports, the notion that Congress intended to extend the scope of section 101 to encompass such methods.

Business method patents do not promote the “useful arts” because they are not directed to any technological or scientific innovation. Although business method applications may use technology-such as computers-to accomplish desired results, the innovative aspect of the claimed method is an entrepreneurial rather than a technological one. Thus, although Bilski's claimed hedging method could theoretically be implemented on a computer, that alone does not render it patentable.

Methods of doing business do not apply “the law of nature to a new and useful end.” Because the innovative aspect of such methods is an entrepreneurial rather than a technological one, they should be deemed ineligible for patent protection.

There are a host of difficulties associated with allowing patents to issue on methods of conducting business. Not only do such patents tend to impede rather than promote innovation, they are frequently of poor quality. Most fundamentally, they raise significant First Amendment concerns by imposing broad restrictions on speech and the free flow of ideas.

Business method patents, unlike those granted for pharmaceuticals and other products, offer rewards that are grossly disproportionate to the costs of innovation. In contrast to technological endeavors, business innovations frequently involve little or no investment in research and development. Bilski, for example, likely spent only nominal sums to develop his hedging method. The reward he could reap if his application were allowed- exclusive rights over methods of managing risks in a wide array of commodity transactions-vastly exceeds any costs he might have incurred in devising his “invention.”

Instead of providing incentives to competitors to develop improved business techniques, business method patents remove building blocks of commercial innovation from the public domain. Dreyfuss, supra at 275-77. Because they restrict competitors from using and improving upon patented business methods, such patents stifle innovation.

One reason for the poor quality of business method patents is the lack of readily accessible prior art references. Because business methods were not patentable prior to State Street, “there is very little patent-related prior art readily at hand to the examiner corps.” Dreyfuss, supra at 269.

Like many business method applications, Bilski's application is very broadly drafted. It covers a wide range of means for “hedging” in commodity transactions. If his application were allowed, anyone who discussed ways to balance market risks in any sort of commodity could face potential infringement liability. By adopting overly expansive standards for patentability, the government enables private parties to impose broad and unwarranted burdens on speech and the free flow of ideas.

Indeed, although this court has struggled for years to set out what constitutes sufficient physical transformation to render a process patentable, we have yet to provide a consistent or satisfactory resolution of this issue.

The majority, however, fails to enlighten three of the thorniest issues in the patentability thicket: (1) the continued viability of business method patents, (2) what constitutes sufficient physical transformation or machine-implementation to render a process patentable, and (3) the extent to which computer software and computer-implemented processes constitute statutory subject matter.

==Courtney==

State Street's decision to jettison the prohibition against patenting methods of doing business contravenes congressional intent. Because (1) “the framers consciously acted to bar Congress from granting letters patent in particular types of business,” Comiskey, 499 F.3d at 1375, and (2) Congress evidenced no intent to modify the long-established rule against business method patents when it enacted the 1952 Patent Act, it is hard to fathom how the issuance of patents on business methods can be supported.

II. Business method patents have been justified, in significant measure, by a misapprehension of the legislative history of the 1952 Patent Act. In particular, proponents of such patents have asserted that the Act's legislative history states that Congress intended statutory subject matter to “include anything under the sun that is made by man.” AT & T, 172 F.3d at 1355 (Fed.Cir.1999) (citations and internal quotation marks omitted); see also Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). Read in context, however, the legislative history says no such thing. The full statement from the committee report reads: “A person may have ‘invented’ a machine or a manufacture, which may include anything under the sun that is made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.” S.Rep. No.1979, 82d Cong., 2d Sess. 5 (1952), U.S.Code Cong. & Admin.News 1952, pp. 2394, 2399 (emphasis added); H.R.Rep. No.1923, 82d Cong., 2d Sess. 6 (1952) (emphasis added).

This statement does not support the contention that Congress intended “anything under the sun” to be patentable. To the contrary, the language supports the opposite view: a person may have “invented” anything under the sun, but it is “not necessarily patentable” unless the statutory requirements for patentability have been satisfied. Thus, the legislative history oft-cited to support business method patents undercuts, rather than supports, the notion that Congress intended to extend the scope of section 101 to encompass such methods.

Business method patents do not promote the “useful arts” because they are not directed to any technological or scientific innovation. Although business method applications may use technology-such as computers-to accomplish desired results, the innovative aspect of the claimed method is an entrepreneurial rather than a technological one. Thus, although Bilski's claimed hedging method could theoretically be implemented on a computer, that alone does not render it patentable. See Diehr, 450 U.S. at 192 n. 14, 101 S.Ct. 1048 (Patentability cannot be established by the “token” use of technology.); Gottschalk v. Benson, 409 U.S. 63, 64-66, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) (finding unpatentable a method of programming a general purpose digital computer to convert signals from binary-coded decimal to pure binary form). Where a claimed business method simply uses a known machine to do what it was designed to do, such as using a computer to gather data or perform calculations, use of that machine will not bring otherwise unpatentable subject matter within the ambit of section 101. See Benson, 409 U.S. at 67, 93 S.Ct. 253 (finding a process unpatentable where “[t]he mathematical procedures [could] be carried out in existing computers long in use, no new machinery being necessary”).

Methods of doing business do not apply “the law of nature to a new and useful end.” Because the innovative aspect of such methods is an entrepreneurial rather than a technological one, they should be deemed ineligible for patent protection. See, e.g., John R. Thomas, The Patenting of the Liberal Professions, 40 B.C. L.Rev. 1139 (1999) (arguing that affording patentability to business methods opens the door to obtaining patent protection for all aspects of human thought and behavior, and that patents should remain grounded in science and technology) (hereinafter “Thomas (1999)”). “[T]he primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is ‘to promote the progress of science and useful arts.’ ” *1004 Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 511, 37 S.Ct. 416, 61 L.Ed. 871 (1917). Although business method patents may do much to enrich their owners, they do little to promote scientific research and technological innovation.

Patents granted in the wake of State Street have ranged from the somewhat ridiculous to the truly absurd. See, e.g., U.S. Patent No. 5,851,117 (method of training janitors to dust and vacuum using video displays); U.S. Patent No. 5,862,223 (method for selling expert advice); U.S. Patent No. 6,014,643 (method for trading securities); U.S. Patent No. 6,119,099 (method of enticing customers to order additional food at a fast food restaurant); U.S. Patent No. 6,329,919 (system for toilet reservations); U.S. Patent No. 7,255,277 (method of using color-coded bracelets to designate dating status in order to limit “the embarrassment of rejection”). There has even been a patent issued on a method for obtaining a patent. See U.S. Patent No. 6,049,811. Not surprisingly, State Street and its progeny have generated a thundering chorus of criticism. See Leo J. Raskind, The State Street Bank Decision: The Bad Business of Unlimited Patent Protection for Methods of Doing Business, 10 Fordham Intell. Prop. Media & Ent. L.J. 61, 61 (1999) (“The Federal Circuit's recent endorsement of patent protection for methods of doing business marks so sweeping a departure from precedent as to invite a search for its justification.”); Pollack, supra at 119-20 (arguing that State Street was based upon a misinterpretation of both the legislative history and the language of section 101 and that “business method patents are problematical both socially and constitutionally”); Price, supra at 155 (“The fall out from State Street has created a gold-rush mentality toward patents and litigation in which companies .... gobble up patents on anything and everything.... It is a mad rush to get as many dumb patents as possible.” (citations and internal quotation marks omitted)); Thomas (1999), supra at 1160 (“After State Street, it is hardly an exaggeration to say that if you can name it, you can claim it.”); Sfekas, supra at 226 (“[T]he U.S. courts *1005 have set too broad a standard for patenting business methods.... These business method patents tend to be of lower quality and are unnecessary to achieve the goal of encouraging innovation in business.”); William Krause, Sweeping the E-Commerce Patent Minefield: The Need for a Workable Business Method Exception, 24 Seattle U.L.Rev. 79, 101 (2000) ( State Street “opened up a world of unlimited possession to anyone quick enough to take a business method and put it to use via computer software before anyone else.”); Moy, supra at 1051 (“To call [the situation following State Street ] distressing is an understatement. The consensus ... appears to be that patents should not be issuing for new business methods.”).

There are a host of difficulties associated with allowing patents to issue on methods of conducting business. Not only do such patents tend to impede rather than promote innovation, they are frequently of poor quality. Most fundamentally, they raise significant First Amendment concerns by imposing broad restrictions on speech and the free flow of ideas.

Business innovations, by their very nature, provide a competitive advantage and thus generate their own incentives. See Xiang, supra at 813 (“A business entity improves the way it does business in order to be more effective and efficient, to stay ahead of [the] competition, and to make more profit.”). The rapid “growth of fast food restaurants, self-service gasoline stations, quick oil change facilities ... automatic teller devices ... and alternatives for long-distance telephone services” casts real doubt about the need for the additional incentive of patent protection in the commercial realm. Raskind, supra at 93.

Although patents are not a prerequisite to business innovation, they are of undeniable importance in promoting technological advances. For example, the pharmaceutical*1006 industry relies on patent protection in order to recoup the large sums it invests to develop life-saving and life-enhancing drugs:

Business method patents, unlike those granted for pharmaceuticals and other products, offer rewards that are grossly disproportionate to the costs of innovation. In contrast to technological endeavors, business innovations frequently involve little or no investment in research and development. Bilski, for example, likely spent only nominal sums to develop his hedging method. The reward he could reap if his application were allowed-exclusive rights over methods of managing risks in a wide array of commodity transactions-vastly exceeds any costs he might have incurred in devising his “invention.”

Allowing patents to issue on business methods shifts critical resources away from promoting and protecting truly useful technological advances. As discussed previously, the patent office has been deluged with business method applications in recent years. Time spent on such applications is time not spent on applications which claim true innovations. When already overburdened examiners are forced to devote significant time to reviewing large numbers of business method applications, the public's access to new and beneficial technologies is unjustifiably delayed.

Regardless of whether a claimed process involves a “physical transformation,” it should not be patent eligible unless it is directed to an advance in science or technology. See Benson, 409 U.S. at 64-71, 93 S.Ct. 253 (finding a process unpatentable even though it “transformed” binary-coded decimals into pure binary numbers using a general purpose computer). Although the Supreme Court has stated that a patentable process will usually involve a transformation of physical matter, see id. at 70, 93 S.Ct. 253, it has never found a process patent eligible which did not involve a scientific or technological innovation. See Diehr, 450 U.S. at 192-93, 101 S.Ct. 1048 (finding a process patentable where it involved new technology for curing rubber).

== Kevin ==

MAYER, Circuit Judge, dissenting.
The en banc order in this case asked: “Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed.Cir.1998), and AT & T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed.Cir.1999), in this case and, if so, whether those cases should be overruled in any respect?” I would answer that question with an emphatic “yes.” The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw (“Bilski”) is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT & T should be overruled.

When drafting the Constitution, the framers were well aware of the abuses that led to the English Statute of Monopolies and therefore “consciously acted to bar Congress from granting letters patent in particular types of business.”

If Congress had wished to change the established practice of disallowing patents on business methods, it was quite capable of doing so explicitly. See Parker v. Flook, 437 U.S. 584, 596, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) (stressing that courts “must proceed cautiously when ... asked to extend patent rights into areas wholly unforeseen by Congress”).

I. Business method patents have been justified, in significant measure, by a misapprehension of the legislative history of the 1952 Patent Act. In particular, proponents of such patents have asserted that the Act's legislative history states that Congress intended statutory subject matter to “include anything under the sun that is made by man.”

This statement does not support the contention that Congress intended “anything under the sun” to be patentable. To the contrary, the language supports the opposite view: a person may have “invented” anything under the sun, but it is “not necessarily patentable” unless the statutory requirements for patentability have been satisfied. Thus, the legislative history oft-cited to support business method patents undercuts, rather than supports, the notion that Congress intended to extend the scope of section 101 to encompass such methods.

Business method patents do not promote the “useful arts” because they are not directed to any technological or scientific innovation.

These business method patents tend to be of lower quality and are unnecessary to achieve the goal of encouraging innovation in business.”); William Krause, Sweeping the E-Commerce Patent Minefield: The Need for a Workable Business Method Exception, 24 Seattle U.L.Rev. 79, 101 (2000) ( State Street “opened up a world of unlimited possession to anyone quick enough to take a business method and put it to use via computer software before anyone else.”)

There are a host of difficulties associated with allowing patents to issue on methods of conducting business. Not only do such patents tend to impede rather than promote innovation, they are frequently of poor quality. Most fundamentally, they raise significant First Amendment concerns by imposing broad restrictions on speech and the free flow of ideas.
A. “[T]he underlying policy of the patent system [is] that ‘the things which are worth to the public the embarrassment of an exclusive patent,’ ... must outweigh the restrictive effect of the limited patent monopoly.” Graham, 383 U.S. at 10-11, 86 S.Ct. 684 (quoting letter from Thomas Jefferson to Isaac McPherson (Aug. 1813)). Thus, Congress may not expand the scope of “the patent monopoly without regard to the ... advancement or social benefit gained thereby.” Id. at 6, 86 S.Ct. 684.

A. “[T]he underlying policy of the patent system [is] that ‘the things which are worth to the public the embarrassment of an exclusive patent,’ ... must outweigh the restrictive effect of the limited patent monopoly.” Graham, 383 U.S. at 10-11, 86 S.Ct. 684 (quoting letter from Thomas Jefferson to Isaac McPherson (Aug. 1813)). Thus, Congress may not expand the scope of “the patent monopoly without regard to the ... advancement or social benefit gained thereby.” Id. at 6, 86 S.Ct. 684.

. “[S]ometimes too much patent protection can impede rather than ‘promote the Progress of Science and useful Arts,’ the constitutional objective of patent and copyright protection.” Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 548 U.S. 124, 126, 126 S.Ct. 2921, 165 L.Ed.2d 399 (2006) (Breyer, J., joined by Stevens and Souter, JJ., dissenting from dismissal of writ of certiorari) (emphasis in original). This is particularly true in the context of patents on methods of conducting business.

Another significant problem that plagues business method patents is that they tend to be of poor overall quality.

Allowing patents to issue on business methods shifts critical resources away from promoting and protecting truly useful technological advances. As discussed previously, the patent office has been deluged with business method applications in recent years. Time spent on such applications is time not spent on applications which claim true innovations. When already overburdened examiners are forced to devote significant time to reviewing large numbers of business method applications, the public's access to new and beneficial technologies is unjustifiably delayed.

Regardless of whether a claimed process involves a “physical transformation,” it should not be patent eligible unless it is directed to an advance in science or technology.

The majority refuses to inject a technology requirement into the section 101 analysis because it believes that the terms “technological arts” and “technology” are “ambiguous.” See ante at 960. To the contrary, however, the meaning of these terms is not particularly difficult to grasp. “The need to apply some sort of ‘technological arts' criterion has hardly led other countries' and regions' patent systems to grind to a halt; it is hard to see why it should be an insurmountable obstacle for ours.”

Talk:In Re Bilski, Newman dissenting opinion

2010-03-19T12:34:25Z

Kevin: /* Kevin */ new section

== Maura ==

The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

This exclusion is imposed at the threshold, before it is determined whether the excluded process is new, non- obvious, enabled, described, particularly claimed, etc.; that is, before the new process is examined for patentability. For example, we do not know whether the Bilski process would be found patentable under the statutory criteria, for they were never applied.

This court's redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

Instead, the Court made clear that it was not barring patents on computer programs, and rejected the “argu[ment] that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a ‘different state or thing’ ” in order to satisfy Section 101. Id. Although my colleagues now describe these statements as “equivocal,” maj. op. at 956, there is nothing equivocal about “We do not so hold.” Benson, 409 U.S. at 71, 93 S.Ct. 253. Nonetheless, this court now so holds.

A rule that unanticipated inventions are without protection would conflict with the core concept of the patent law that anticipation undermines patentability. Mr. Justice Douglas reminded that the *981 inventions most benefiting mankind are those that push back the frontiers of chemistry, physics, and the like. Congress employed broad general language in drafting § 101 precisely because such inventions are often unforeseeable.

However, the Court did not propose the “machine-or-transformation” test that this court now insists was “enunciated” in Diehr as a specific limit to Section 101. Maj. op. at 953-54. In Diehr there was no issue of machine or transformation, for the Diehr process both employed a machine and produced a chemical transformation: the process was conducted in “an openable rubber molding press,” and it cured the rubber. In discussing the known mathematical formula used by Diehr to calculate the relation between temperature and the rate of a chemical reaction, the Court recited the traditional exceptions of “laws of nature, natural phenomena, and abstract ideas,” 450 U.S. at 185, 101 S.Ct. 1048, and explained that the entirety of the process *982 must be considered, not an individual mathematical step.

Although the Court in Benson and in Flook took care to state that these early decisions do not require the restrictions that the Court was rejecting, this court now places heavy reliance on these early decisions, which this court describes as “consistent with the machine-or-transformation test later articulated in Benson and reaffirmed in Diehr.” Maj. op. at 955. As I have discussed, no such test was “articulated in Benson ” and “reaffirmed in Diehr.”

However, these early cases do show, contrary to the majority opinion, that a “process” has always been a distinct category of patentable invention, and not tied to either apparatus or transformation, as this court now holds. For example, in Tilghman v. Proctor the Court considered a patent on a process for separating fats and oils, and held that the process was not restricted to any particular apparatus.

However, the claims that were directed to the communication system that was described by Morse were held patentable, although no machine, transformation, or manufacture was required. See Morse's Claim 5 (“The system of signs, consisting of dots and spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”). I cannot discern how the Court's rejection of Morse's Claim 8 on what would now be Section 112 grounds, or the allowance of his other claims, supports this court's ruling today. Indeed, Morse's claim 5, to a system of signs, is no more “tangible” than the systems held patentable in Alappat and State Street Bank, discussed post and now cast into doubt, or the Bilski system here held ineligible for access to patenting.

This court now rejects its own CCPA and Federal Circuit precedent The majority opinion holds that there is a Supreme Court restriction on process patents, “enunciated” in Benson, Flook, and Diehr; and that this restriction was improperly ignored by the Federal Circuit and the Court of Customs and Patent Appeals, leading us into error which we must now correct. Thus this court announces that our prior decisions may no longer be relied upon.

In In re Alappat, 33 F.3d 1526 (Fed.Cir.1994) ( en banc ) the question was the eligibility for patent of a rasterizer that mathematically transforms data to eliminate aliasing in a digital oscilloscope. The court held that a computer-implemented system that produces a “useful, concrete, and tangible result” is Section 101 subject matter. Id. at 1544. This court now rules that “a ‘useful, concrete and tangible result’ analysis should no longer be relied on.” Maj. op. at 960 n. 19.

A close analysis of Diehr, Flook, and Benson reveals that the Supreme Court never intended to create an overly broad, fourth category of [mathematical] subject matter excluded from § 101. Rather, at the core of the Court's analysis in each of these cases lies an attempt by the Court to explain a rather straightforward concept, namely, that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, and thus that subject matter is not, in and of itself, entitled to patent protection.

The PTO reports that in Class 705, the examination classification associated with “business methods” and most likely to receive inventions that may not use machinery or transform physical matter, there were almost 10,000 patent applications filed in FY 2006 alone, and over 40,000 applications filed since FY 98 when State Street Bank was decided.

See Benjamin N. Cardozo, The Nature of the Judicial Process 149 (1921) (“[T]he labor of judges would be increased almost to the breaking point if every past decision could be reopened in every case, and one could not lay one's own course of bricks on the secure foundation of the courses laid by others who had gone before him.”).

Instead, the court states the “true issue before us” is “whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or mental process,” maj. op. at 952, and answers “yes.” With respect, that is the wrong question, and the wrong answer. Bilski's patent application describes his process of analyzing the effects of supply and demand on commodity prices and the use of a coupled transaction strategy to hedge against these risks; this is not a fundamental principle or an abstract idea; it is not a mental process or a law of nature. It is a “process,” set out in successive steps, for obtaining and analyzing information and carrying out a series of commercial transactions for the purpose of “managing the consumption risk costs of a commodity *996 sold by a commodity provider at a fixed price.”

Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S.Ct. 550, 92 L.Ed. 701 (1948), Justice Burton, joined by Chief Justice *998 Vinson and Justice Frankfurter, remarked that “the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use.” This remains true today. It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.

==Courtney==

The innovations of the “knowledge economy”-of “digital prosperity”-have been dominant contributors to today's economic *977 growth and societal change. Revision of the commercial structure affecting major aspects of today's industry should be approached with care, for there has been significant reliance on the law as it has existed, as many amici curiae pointed out. Indeed, the full reach of today's change of law is not clear, and the majority opinion states that many existing situations may require reassessment under the new criteria.

Uncertainty is the enemy of innovation. These new uncertainties not only diminish the incentives available to new enterprise, but disrupt the settled expectations of those who relied on the law as it existed. I respectfully dissent.

It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

The Court in Flook discussed that abstractions and fundamental principles have never been subject to patenting, but recognized the “unclear line” between an abstract principle and the application of such principle:

The line between a patentable “process” and an unpatentable “principle” is not always clear. Both are “conception[s] of the mind, seen only by [their] effects when being executed or performed.”

Whether the applications of physics and chemistry that are manifested in advances in computer hardware and software were more or less foreseeable than the advances in biology and biotechnology is debatable, but it is not debatable that these fields of endeavor have become primary contributors to today's economy and culture, as well as offering an untold potential for future advances. My colleagues offer no reason now to adopt a policy of exclusion of the unknown future from the subject matter now embraced in Section 101.

[W]hen a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect ( e.g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

That a patent can be granted for a process, there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture.

While most patents of an earlier era reflect the dominant mechanical and chemical technologies of that era, modern processes reflect the dramatic advances in telecommunications and computing that have occurred since the time of George III. See USPTO White Paper, Automated Financial or Management Data Processing Methods (Business Methods) 4 (2000), available at http:// www. uspto. gov/ web/ menu/ busmethp/ whitepaper. pdf (hereinafter USPTO White Paper) (“The full arrival of electricity as a component in business data processing system[s] was a watershed event.”). It is apparent that economic, or “business method,” or “human activity” patents were neither explicitly nor implicitly foreclosed from access to the English patent system.

Evolution of process patents in the United States The United States' history of patenting establishes the same point. The PTO has located various patents predating modern computer usages that can be described as financial or business methods. The USPTO White Paper at 3-4 and appendix A describes the history of financial apparatus and method patents dating back to 1799, including patents on bank notes, bills of *990 credit, bills of exchange, check blanks, detecting and preventing counterfeiting, coin counting, interest calculation tables, and lotteries, all within the first fifty years of the United States patent system. It is a distortion of these patents to describe the processes as “tied to” another statutory category-that is, paper and pencil. Concurring op. at 974-75 & n. 18. Replacement of paper with a computer screen, and pencil with electrons, does not “untie” the process. Fairly considered, the many older financial and business-oriented patents that the PTO and many of the amici have identified are of the same type as the Bilski claims; they were surely not rendered patent-eligible solely because they used “paper” to instantiate the financial strategies and transactions that comprised their contribution.

Instead, the court states the “true issue before us” is “whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or mental process,” maj. op. at 952, and answers “yes.” With respect, that is the wrong question, and the wrong answer. Bilski's patent application describes his process of analyzing the effects of supply and demand on commodity prices and the use of a coupled transaction strategy to hedge against these risks; this is not a fundamental principle or an abstract idea; it is not a mental process or a law of nature. It is a “process,” set out in successive steps, for obtaining and analyzing information and carrying out a series of commercial transactions for the purpose of “managing the consumption risk costs of a commodity *996 sold by a commodity provider at a fixed price.” Claim 1, preamble.

The court today acts en banc to impose a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system. The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

Thus laws of nature, natural phenomena, and abstract ideas are not subject to patenting. Several rulings of the Court have reviewed patent eligibility in light of these fundamentals. However, the Court explicitly negated today's restrictions. My colleagues in the majority are mistaken in finding that decisions of the Court require the per se limits to patent eligibility that the Federal Circuit today imposes. The patent statute and the Court's decisions neither establish nor support the exclusionary criteria now adopted.

The definition of “process” provided at 35 U.S.C. § 100(b) is not “unhelpful,” as this court now states, maj. op. at 951 n. 3, but rather points up the errors in the court's new statutory interpretation. Section 100(b) incorporates the prior usage “art” and the term “method,” and places no restriction on the definition. This court's redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

This court's new definition of “process” was rejected in Gottschalk v. Benson In Benson the claimed invention was a mathematical process for converting binary-coded decimal numerals into pure binary numbers. The Court explained that a mathematical formula unlimited to a specific use was simply an abstract idea of the nature of “fundamental truths,” “phenomena of nature,” and “abstract intellectual concepts,” as have traditionally been outside of patent systems. 409 U.S. at 67, 93 S.Ct. 253. However, the Court explicitly declined to limit patent-eligible processes in the manner now adopted by this court, stating: It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

However, these early cases do show, contrary to the majority opinion, that a “process” has always been a distinct category of patentable invention, and not tied to either apparatus or transformation, as this court now holds.

While most patents of an earlier era reflect the dominant mechanical and chemical technologies of that era, modern processes reflect the dramatic advances in telecommunications and computing that have occurred since the time of George III.

CONCLUSION In sum, the text of Section 101, its statutory history, its interpretation by the Supreme Court, and its application by the courts, contravene this court's redefinition of the statutory term “process.” The court's decision affects present and future rights and incentives, and usurps the legislative role. The judicial role is to support stability and predictability in the law, with fidelity to statute and precedent, and respect for the principles of stare decisis.
Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S.Ct. 550, 92 L.Ed. 701 (1948), Justice Burton, joined by Chief Justice *998 Vinson and Justice Frankfurter, remarked that “the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use.” This remains true today. It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.

== Kevin ==

The court today acts en banc to impose a new and far-reaching restriction on the kinds of inventions that are eligible to participate in the patent system. The court achieves this result by redefining the word “process” in the patent statute, to exclude all processes that do not transform physical matter or that are not performed by machines. The court thus excludes many of the kinds of inventions that apply today's electronic and photonic technologies, as well as other processes that handle data and information in novel ways. Such processes have long been patent eligible, and contribute to the vigor and variety of today's Information Age. This exclusion of process inventions is contrary to statute, contrary to precedent, and a negation of the constitutional mandate. Its impact on the future, as well as on the thousands of patents already granted, is unknown.

Thus laws of nature, natural phenomena, and abstract ideas are not subject to patenting. Several rulings of the Court have reviewed patent eligibility in light of these fundamentals. However, the Court explicitly negated today's restrictions. My colleagues in the majority are mistaken in finding that decisions of the Court require the per se limits to patent eligibility that the Federal Circuit today imposes. The patent statute and the Court's decisions neither establish nor support the exclusionary criteria now adopted.

The definition of “process” provided at 35 U.S.C. § 100(b) is not “unhelpful,” as this court now states, maj. op. at 951 n. 3, but rather points up the errors in the court's new statutory interpretation. Section 100(b) incorporates the prior usage “art” and the term “method,” and places no restriction on the definition. This court's redefinition of “process” as limiting access to the patent system to those processes that use specific machinery or that transform matter, is contrary to two centuries of statutory definition.

This court's new definition of “process” was rejected in Gottschalk v. Benson In Benson the claimed invention was a mathematical process for converting binary-coded decimal numerals into pure binary numbers. The Court explained that a mathematical formula unlimited to a specific use was simply an abstract idea of the nature of “fundamental truths,” “phenomena of nature,” and “abstract intellectual concepts,” as have traditionally been outside of patent systems. 409 U.S. at 67, 93 S.Ct. 253. However, the Court explicitly declined to limit patent-eligible processes in the manner now adopted by this court, stating: It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

However, these early cases do show, contrary to the majority opinion, that a “process” has always been a distinct category of patentable invention, and not tied to either apparatus or transformation, as this court now holds.

While most patents of an earlier era reflect the dominant mechanical and chemical technologies of that era, modern processes reflect the dramatic advances in telecommunications and computing that have occurred since the time of George III.

CONCLUSION In sum, the text of Section 101, its statutory history, its interpretation by the Supreme Court, and its application by the courts, contravene this court's redefinition of the statutory term “process.” The court's decision affects present and future rights and incentives, and usurps the legislative role. The judicial role is to support stability and predictability in the law, with fidelity to statute and precedent, and respect for the principles of stare decisis.
Patents provide an incentive to invest in and work in new directions. In United States v. Line Material Co., 333 U.S. 287, 332, 68 S.Ct. 550, 92 L.Ed. 701 (1948), Justice Burton, joined by Chief Justice *998 Vinson and Justice Frankfurter, remarked that “the frontiers of science have expanded until civilization now depends largely upon discoveries on those frontiers to meet the infinite needs of the future. The United States, thus far, has taken a leading part in making those discoveries and in putting them to use.” This remains true today. It is antithetical to this incentive to restrict eligibility for patenting to what has been done in the past, and to foreclose what might be done in the future.

Talk:In Re Bilski, Newman dissenting opinion

2010-03-19T12:34:07Z

Kevin:

Talk:In Re Bilski, Dky concurring opinion

2010-03-19T12:26:55Z

Kevin: /* Kevin */ new section

== Maura ==

In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793). It is our dissenting colleagues who would legislate by expanding patentable subject matter far beyond what is allowed by the statute.

The English practice in 1793, imported into the American statutes, explicitly recognized a limit on patentable subject matter. As the Supreme Court recounted in Graham v. John Deere, the English concern about limiting the allowable scope of patents arose from an aversion to the odious Crown practice of granting patents on particular types of businesses to court favorites.

The question remains as to what processes were considered to be patentable in England at the time of the 1793 Act. Examination of the relevant sources leads to the conclusion that the method Bilski seeks to claim would not have been considered patentable subject matter as a process under the English statute.

There is no suggestion in any of this early consideration of process patents that processes for organizing human activity were or ever had been patentable. Rather, the uniform assumption was that the only processes that were patentable were processes for using or creating manufactures, machines, and compositions of matter.

To be sure, Congress intended the courts to have some latitude in interpreting § 101 to cover emerging technologies, Chakrabarty, 447 U.S. at 316, 100 S.Ct. 2204, and the categorical terms chosen are sufficiently broad to encompass a wide range of new technologies. But there is no evidence that Congress intended to confer upon the courts latitude to extend the categories of patentable subject matter in a significant way. To the contrary, the Supreme Court made clear that “Congress has performed its constitutional role in defining patentable subject matter in § 101; we perform ours in construing the language Congress has employed. In so doing, our obligation is to take statutes as we find them, guided, if ambiguity appears, by the legislative history and statutory purpose.”

It refers to things “made by man,” not to methods of organizing human activity. In this respect, the language is reminiscent of the 1799 use of the phrase “something made by the hands of man” by Chief Justice Lord Kenyon as a limitation on patentable subject matter under the Statute of Monopolies. The idea that an invention must be “made by man” was used to distinguish “a philosophical principle only, neither organized or capable of being organized” from a patentable manufacture.

In short, the history of § 101 fully supports the majority's holding that Bilski's claim does not recite patentable subject matter. Our decision does not reflect “legislative” work, but rather careful and respectful adherence to the Congressional purpose.

==Courtney==

Each of the five categories of patentable subject matter recognized by the 1793 Patent Act-(1) “manufacture,” (2) “machine,” (3) “composition of matter,” (4) “any new and useful improvement,” and (5) “art”-*969 was drawn either from the Statute of Monopolies and the common law refinement of its interpretation or resolved competing views being debated in England at the time. See To Promote the Progress, supra n. 4 at 239.

The absence of business method patents cannot be explained by an absence of entrepreneurial creativity in Great Britain during the century before the American Revolution. On the contrary, 1720 is widely hailed as the beginning of a new era in English public finance and the beginning of major innovations in business organization.

Likewise, Supreme Court decisions before the 1952 Patent Act assumed that the only processes that were patentable were those involving other types of patentable subject matter. In later cases the Supreme Court has recognized that these cases set forth the standard for process *975 patents in the pre-1952 period. Diehr, 450 U.S. at 182-84, 101 S.Ct. 1048; Gottschalk, 409 U.S. at 69-70, 93 S.Ct. 253. The leading case is Corning v. Burden, 56 U.S. 252, 15 How. 252, 14 L.Ed. 683 (1853). There, the Supreme Court discussed the patentability of processes:

A process, eo nomine, is not made the subject of a patent in our act of Congress. It is included under the general term ‘useful art.’ An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations, are called ‘processes.’ A new process is usually the result of discovery; a machine, of invention. The arts of tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores, and numerous others are usually carried on by processes, as distinguished from machines.... It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations.

That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed.... A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.

That a patent can be granted for a process there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture. A manufacturing process is clearly an art, within the meaning of the law.

Finally, nothing in the legislative history of the 1952 Act suggests that Congress intended to enlarge the category of patentable subject matter to include patents such as the method Bilski attempts to claim. As discussed above, the only change made by the 1952 Act was in replacing the word *976 “art” with the word “process.” The Supreme Court has already concluded that this change did not alter the substantive understanding of the statute. See Diehr, 450 U.S. at 182, 101 S.Ct. 1048 (“[A] process has historically enjoyed patent protection because it was considered a form of ‘art’ as that term was used in the 1793 Act.”).

The House Report accompanying the 1952 bill includes the now-famous reference to “anything under the sun made by man”:

A person may have “invented” a machine or a manufacture, which may include anything under the sun made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

H.R.1923 at 7. Although this passage has been used by our court in past cases to justify a broad interpretation of patentable subject matter, I agree with Judge Mayer that, when read in context, the statement undercuts the notion that Congress intended to expand the scope of § 101. See Mayer, J., dissenting op. at 1000. It refers to things “made by man,” not to methods of organizing human activity. In this respect, the language is reminiscent of the 1799 use of the phrase “something made by the hands of man” by Chief Justice Lord Kenyon as a limitation on patentable subject matter under the Statute of Monopolies. The idea that an invention must be “made by man” was used to distinguish “a philosophical principle only, neither organized or capable of being organized” from a patentable manufacture. Hornblower, 8 T.R. at 98. Lord Kenyon held that the patent before him was not based on a mere principle, but was rather “a patent for a manufacture, which I understand to be something made by the hands of man.” Id. at 98 (emphases added); accord American Fruit Growers v. Brogdex Co., 283 U.S. 1, 11, 51 S.Ct. 328, 75 L.Ed. 801 (1931) (giving “anything made for use from raw or prepared materials” as one definition of “manufacture”).

In short, the history of § 101 fully supports the majority's holding that Bilski's claim does not recite patentable subject matter. Our decision does not reflect “legislative” work, but rather careful and respectful adherence to the Congressional purpose.

== Kevin ==

While I fully join the majority opinion, I write separately to respond to the claim in the two dissents that the majority's opinion is not grounded in the statute, but rather “usurps the legislative role.” FN1 In fact, the unpatentability of processes not involving manufactures, machines, or compositions of matter has been firmly embedded in the statute since the time of the Patent Act of 1793, ch. 11, 1 Stat. 318 (1793). It is our dissenting colleagues who would legislate by expanding patentable subject matter far beyond what is allowed by the statute.

It is obvious to the careful inquirer, that many of the provisions of our patent act are derived from the principles and practice which have prevailed in the construction of that of England .... The language of [the patent clause of the Statute of Monopolies] is not, as we shall presently see, identical with ours; but the construction of it adopted by the English courts, and the principles and practice which have long regulated the grants of their patents, as they must have been known and are tacitly referred to in some of the provisions of our own statute, afford materials to illustrate it.

Each of the five categories of patentable subject matter recognized by the 1793 Patent Act-(1) “manufacture,” (2) “machine,” (3) “composition of matter,” (4) “any new and useful improvement,” and (5) “art”-*969 was drawn either from the Statute of Monopolies and the common law refinement of its interpretation or resolved competing views being debated in England at the time. See To Promote the Progress, supra n. 4 at 239.

Second, the English patent practice before and contemporaneous with the 1793 Act confirms the notion that patentable subject matter was limited by the term “manufacture” in the Statute of Monopolies and required a relation to the other categories of patentable subject matter. The organization of human activity was not within its bounds. Rather, the patents registered in England under the Statute of Monopolies before 1793 were limited to articles of manufacture, machines for manufacturing, compositions of matter, and related processes. A complete list of such patents (with a few missing patents from the 17th century) was published in the mid-1800s by Bennet Woodcroft, the first head of the English Patent Office.

Nothing in Woodcroft's list suggests that any of these hundreds of patents was on a method for organizing human activity, save for one aberrational patent discussed *971 below. Rather, the established practice reflects the understanding that only processes related to manufacturing or “manufactures” were within the statute.

B The dissenters here, by implication at least, appear to assume that this consistent English practice should somehow be ignored in interpreting the current statute because of technological change.FN14 There are several responses to this.

The first of these is that the Supreme Court has made clear that when Congress intends to codify existing law, as was the case with the 1793 statute, the law must be interpreted in light of the practice at the time of codification. In Schmuck v. United States, 489 U.S. 705, 718-19, 109 S.Ct. 1443, 103 L.Ed.2d 734 (1989), for example, the Court considered the proper interpretation of Rule 31(c) of the Federal Rules of Criminal Procedure. The rule, “which ha [d] not been amended since its adoption in 1944,” was a restatement of an 1872 Act “codif[ying] the common law for federal criminal trials.”

It is for the discovery or invention of some practicable method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations.

A person may have “invented” a machine or a manufacture, which may include anything under the sun made by man, but it is not necessarily patentable under section 101 unless the conditions of the title are fulfilled.

Talk:In Re Bilski

2010-03-15T11:09:22Z

Kevin: /* Kevin */ new section

==Courtney==
Patent applicants challenged denial of patent application for method of hedging risk in field of commodities trading based on lack of patent-eligible subject matter. The Patent and Trademark Office, Board of Patent Appeals and Interferences, 2006 WL 5738364, sustained rejection of all claims in application. Applicants appealed.

The examiner ultimately rejected claims 1-11 under 35 U.S.C. § 101, stating: “[r]egarding ... claims 1-11, the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.” See Board Decision, slip op. at 3. The examiner noted that Applicants had admitted their claims are not limited to operation on a computer, and he concluded that they were not limited by any specific apparatus. See id. at 4.

The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.

The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. How does one determine whether a given claim would pre-empt all uses of a fundamental principle? Analogizing to the facts of Diehr or Benson is of limited usefulness because the more challenging process claims of the twenty-first century are seldom so clearly limited in scope as the highly specific, plainly corporeal industrial manufacturing process of Diehr; nor are they typically as broadly claimed or purely abstract and mathematical as the algorithm of Benson.

[5] Headnote Citing References[6] Headnote Citing References The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70, 93 S.Ct. 253 (“Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”); Diehr, 450 U.S. at 192, 101 S.Ct. 1048 (holding that use of mathematical formula in process “transforming or reducing an article to a different state or thing” constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n. 9, 98 S.Ct. 2522 (“An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a ‘different state or thing’ ”); Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1876) (“A process is ... an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”).FN7 A claimed process involving a fundamental principle that uses a particular machine or apparatus would not pre-empt uses of the principle that do not also use the specified machine or apparatus in the manner claimed. And a claimed process that transforms a particular article to a specified different state or thing by applying a fundamental principle would not pre-empt the use of the principle to transform any other article, to transform the same article but in a manner not covered by the claim, or to do anything other than transform the specified article.

CONCLUSION Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is

AFFIRMED.

== Maura ==

Importantly, however, the claim is not limited to transactions involving actual commodities, and the application discloses that the recited transactions may simply involve options, i.e., rights to purchase or sell the commodity at a particular price within a particular timeframe. See J.A. at 86-87.

The examiner ultimately rejected claims 1-11 under 35 U.S.C. § 101, stating: “[r]egarding ... claims 1-11, the invention is not implemented on a specific apparatus and merely manipulates [an] abstract idea and solves a purely mathematical problem without any limitation to a practical application, therefore, the invention is not directed to the technological arts.”

Further, the Board held that the requirement of a specific apparatus was also erroneous because a claim that does not recite a specific apparatus may still be directed to patent-eligible subject matter “if there is a transformation of physical subject matter from one state to another.”

But the Board concluded that Applicants' claims do not involve any patent-eligible transformation, holding that transformation of “non-physical financial risks and legal liabilities of the commodity provider, the consumer, and the market participants” is not patent-eligible subject matter.

Finally, the Board held that Applicants' process as claimed did not produce a “useful, concrete and tangible result,” and for this reason as well was not drawn to patent-eligible subject matter. Id. at 49-50.

Thus, the issue before us involves what the term “process” in § 101 means, and how to determine whether a given claim-and Applicants' claim 1 in particular-is a “new and useful process.” FN3

In 1952, at the time Congress amended § 101 to include “process,” FN4 the ordinary meaning of *952 the term was: “[a] procedure ... [a] series of actions, motions, or operations definitely conducing to an end, whether voluntary or involuntary.” Webster's New International Dictionary of the English Language 1972 (2d ed.1952). There can be no dispute that Applicants' claim would meet this definition of “process.” But the Supreme Court has held that the meaning of “process” as used in § 101 is narrower than its ordinary meaning. See Flook, 437 U.S. at 588-89, 98 S.Ct. 2522 (“The holding [in Benson ] forecloses a purely literal reading of § 101.”). Specifically, the Court has held that a claim is not a patent-eligible “process” if it claims “laws of nature, natural phenomena, [or] abstract ideas.”

The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.

The Court declared that while a claim drawn to a fundamental principle is unpatentable, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”

The question before us then is whether Applicants' claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed. Unfortunately, this inquiry is hardly straightforward. How does one determine whether a given claim would pre-empt all uses of a fundamental principle?

The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.

At present, however, and certainly for the present case, we see no need for such a departure and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.FN12

Pre-emption of all uses of a fundamental principle in all fields and pre-emption of all uses of the principle in only one field both indicate that the claim is not limited to a particular application of the principle. See Diehr, 450 U.S. at 193 n. 14, 101 S.Ct. 1048 (“A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses.”) (emphasis added). In contrast, a claim that is tied to a particular machine or brings about a particular transformation of a particular article does not pre-empt all uses of a fundamental principle in any field but rather is limited to a particular use, a specific application. Therefore, it is not drawn to the principle in the abstract.

The first of these is known as the Freeman-Walter-Abele test after the three decisions*959 of our predecessor court that formulated and then refined the test: In re Freeman, 573 F.2d 1237 (CCPA 1978); In re Walter, 618 F.2d 758 (CCPA 1980); and In re Abele, 684 F.2d 902 (CCPA 1982). This test, in its final form, had two steps: (1) determining whether the claim recites an “algorithm” within the meaning of Benson, then (2) determining whether that algorithm is “applied in any manner to physical elements or process steps.” Abele, 684 F.2d at 905-07.

To be sure, a process tied to a particular machine, or transforming or reducing a particular article into a different state or thing, will generally produce a “concrete” and “tangible” result as those terms were used in our prior decisions. But while looking for “a useful, concrete and tangible result” may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under § 101. And it was certainly never intended to supplant the Supreme Court's test. Therefore, we also conclude that the “useful, concrete and tangible result” inquiry*960 is inadequate and reaffirm that the machine-or-transformation test outlined by the Supreme Court is the proper test to apply.

Thus, the proper inquiry under § 101 is not whether the process claim recites sufficient “physical steps,” but rather whether the claim meets the machine-or-transformation test.FN25 As a result, even a claim that recites “physical steps” but neither recites a particular machine or apparatus, nor transforms any article into a different state or thing, is not drawn to patent-eligible subject matter. Conversely, a claim that purportedly lacks any “physical steps” but is still tied to a machine or achieves an eligible transformation passes muster under § 101.

Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants' claim here plainly fails that test, the decision of the Board is
AFFIRMED.

== Kevin ==

Holdings: Following sua sponte order of review en banc, the Court of Appeals, Michel, Chief Judge, held that: (1) machine-or-transformation test, rather than test determining whether claim recited algorithm applied in any manner to physical elements or process steps, was applicable test for determining patent-eligibility of process claims, abrogating, In re Freeman, 573 F.2d 1237, In re Walter, 618 F.2d 758, and In re Abele, 684 F.2d 902; (2) machine-or-transformation test, rather than “useful, concrete and tangible result” inquiry, was proper test to apply to determine patent-eligibility of process claims, abrogating In re Alappat, 33 F.3d 1526, State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352; and (3) claim was not drawn to patent-eligible subject matter under transformation branch of machine-or-transformation test.
Affirmed.

35 U.S.C. § 101. The statute thus recites four categories of patent-eligible subject matter: processes, machines, manufactures, and compositions of matter.

Diehr can be understood to suggest that whether a claim is drawn only to a fundamental principle is essentially an inquiry into the scope of that exclusion; i.e., whether the effect of allowing the claim would be to allow the patentee to pre-empt substantially all uses of that fundamental principle. If so, the claim is not drawn to patent-eligible subject matter.

Nevertheless, we agree that future developments in technology and the sciences may present difficult challenges to the machine-or-transformation test, just as the widespread use of computers and the advent of the Internet has begun to challenge it in the past decade. Thus, we recognize that the Supreme Court may ultimately decide to alter or perhaps even set aside this test to accommodate emerging technologies. And we certainly do not rule out the possibility that this court may in the future refine or augment the test or how it is applied. At present, however, and certainly for the present case, we see no need for such a departure and reaffirm that the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101.FN12

First, the Court has held that whether a claimed process is novel or non-obvious is irrelevant to the § 101 analysis.

Second, the Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter.

After all, even though a fundamental principle itself is not patent-eligible, processes incorporating a fundamental principle may be patent-eligible. Thus, it is irrelevant that any individual step or limitation of such processes by itself would be unpatentable under § 101. See In re Alappat, 33 F.3d 1526, 1543-44 (Fed.Cir.1994) (en banc) (citing Diehr, 450 U.S. at 187, 101 S.Ct. 1048).

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70, 93 S.Ct. 253. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson and discussed below, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility.

This court and our predecessor court have frequently stated that adding a data-gathering step to an algorithm is insufficient to convert that algorithm into a patent-eligible process.

Purported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances. Applicants'*964 process at most incorporates only such ineligible transformations.

Applicants' arguments are unavailing because they rely on incorrect or insufficient considerations and do not address their claim's failure to meet the requirements of the Supreme Court's machine-or-transformation test. First, they argue that claim 1 produces “useful, concrete and tangible results.” But as already discussed, this is insufficient to establish patent-eligibility under § 101.

On the other hand, while we agree with the PTO that the machine-or-transformation test is the correct test to apply in determining whether a process claim is patent-eligible under § 101, we do not agree, as discussed earlier, that this amounts to a “technological arts” test. See Appellee's Br. at 24-28. Neither the PTO nor the courts may pay short shrift to the machine-or-transformation test by using purported equivalents or shortcuts such as a “technological arts” requirement. Rather, the machine-or-transformation test is the only applicable test and must be applied, in light of the guidance provided by the Supreme Court and this court, when evaluating the patent-eligibility of process claims. When we do so here, however, we must conclude, as the PTO did, that Applicants' claim fails the test.

Applicants' claim is similar to the claims we held unpatentable under § 101 in Comiskey. There, the applicant claimed a process for mandatory arbitration of disputes regarding unilateral documents and bilateral “contractual” documents in which arbitration was required by the language of the document, a dispute regarding the document was arbitrated, and a binding decision resulted from the arbitration. Comiskey, 499 F.3d at 1368-69. We held the broadest process claims unpatentable under § 101 because “these claims do not require a machine, and these claims evidently do not describe a process of manufacture*965 or a process for the alteration of a composition of matter.” Id. at 1379. We concluded that the claims were instead drawn to the “mental process” of arbitrating disputes, and that claims to such an “application of [only] human intelligence to the solution of practical problems” is no more than a claim to a fundamental principle. Id. at 1377-79 (quoting Benson, 409 U.S. at 67, 93 S.Ct. 253 (“[M]ental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”)).

Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

2010-03-03T13:22:05Z

Kevin:

==Courtney==

The district court held that the method and apparatus claims of the Simson patent are directed to a mathematical algorithm, and thus do not define statutory subject matter.

A mathematical formula may describe a law of nature, a scientific truth, or an abstract idea. As courts have recognized, mathematics may also be used to describe steps of a statutory method or elements of a statutory apparatus. The exceptions to patentable subject matter derive from a lengthy jurisprudence, but their meaning was probed anew with the advent of computer-related inventions.

It is of course true that a modern digital computer manipulates data, usually in binary form, by performing mathematical operations, such as addition, subtraction, multiplication, division, or bit shifting, on the data. But this is only how the computer does what it does. Of importance is the significance of the data and their manipulation in the real world, i.e., what the computer is doing. [Emphases in original]

Thus computers came to be generally recognized as devices capable of performing or implementing process steps, or serving as components of an apparatus, without negating patentability of the process or the apparatus.

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met. The court explained in Abele, 684 F.2d at 907, 214 USPQ at 686:

Although mathematical calculations are involved in carrying out the claimed process, Arrhythmia Research argues that the claims are directed to a method of detection of a certain heart condition by a novel method of analyzing a portion of the electrocardiographically measured heart cycle. This is accomplished by procedures conducted by means of electronic equipment programmed to perform mathematical computation.

The '459 Patent The '459 patent discloses an apparatus and a method for analyzing electrocardiograph signals to detect heart attack risks. The apparatus is a machine and is covered by the Iwahashi rule. The method converts an analog signal to a digital signal which passes, in reverse time order, through the mathematical equivalent of a filter. The filtered signal's amplitude is then measured and compared with a predetermined value.

The '459 invention manipulates electrocardiogram readings to render a useful result. While many steps in the '459 process involve the mathematical manipulation of data, the claims do not describe a law of nature or a natural phenomenon. Furthermore, the claims do not disclose mere abstract ideas, but a practical and potentially life-saving process. Regardless of whether performed by a computer, these steps comprise a “process” within the meaning of section 101.

This conclusion is erroneous for several reasons. First, even if mathematical algorithms are barred from patentability,[7] the '459 patent as a whole does not present a mathematical algorithm. The '459 patent is a method for detecting the risk of a heart attack, not the presentation and proposed solution of a mathematical problem. In Diehr, the Supreme Court viewed the claims as “an industrial process for molding of rubber products,” not a mathematical algorithm. 450 U.S. at 192-93, 101 S.Ct. at 1060. The '459 patent's claims as a whole disclose a patentable process.

Second, the '459 patent does not claim a natural law, abstract idea, or natural phenomenon. Diehr limited the Benson rule to these three categories, none of which encompass the '459 patent.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

== Maura ==

The Patent and Trademark Office had granted the patent without questioning that its claims were directed to statutory subject matter under § 101.
35 U.S.C. § 101
Whether a claim is directed to statutory subject matter is a question of law. Although determination of this question may require findings of underlying facts specific to the particular subject matter and its mode of claiming, in this case there were no disputed facts material to the issue. Thus we give plenary review to the question, with appropriate recognition of the burdens on the challenger of a duly issued United States patent. See 35 U.S.C. § 282 (duly issued patent is presumed valid); Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1139, 227 USPQ 543, 548, (Fed.Cir.1985) (statutory presumption of validity is based in part on recognition of the expertise of patent examiners).

The law crystallized about the principle that claims directed solely to an abstract mathematical formula or equation, including the mathematical expression of scientific truth or a law of nature, whether directly or indirectly stated, are nonstatutory under section 101; whereas claims to a specific process or apparatus that is implemented in accordance with a mathematical algorithm will generally satisfy section 101.

In applying this principle to an invention whose process steps or apparatus elements are described at least in part in terms of mathematical procedures, the mathematical procedures are considered in the context of the claimed invention as a whole.

This analysis has been designated the Freeman-Walter- Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met.

The Simson claims are analogous to those upheld in Diehr, wherein the Court remarked that the applicants "do not seek to patent a mathematical formula.... they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process". 450 U.S. at 187, 101 S.Ct. at 1057, 209 USPQ at 8. Simson's claimed method is similarly limited. The process claims comprise statutory subject matter.

The judgment of invalidity on the ground that the claimed method and apparatus do not define statutory subject matter is reversed. The cause is remanded for resolution of remaining issues.

RADER, Circuit Judge, concurring.

Section 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

According to this language, "any" invention or discovery within the four broad categories of "process, machine, manufacture, or composition of matter" is eligible for patent protection. "Any" is an expansive modifier which broadens the sweep of the categories. See Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 100 S.Ct. 2204, 2207, 65 L.Ed.2d 144 (1980). The language of section 101 conveys no implication that the Act extends patent protection to some subcategories of machines or processes and not to others.

By mixing the terms "formula" and "algorithm," 437 U.S. at 585-86, 98 S.Ct. at 2523, however, Flook further confused the meaning of "mathematical algorithm." As used by Benson, that term meant "a procedure for solving a given type of mathematical problem." 409 U.S. at 65, 93 S.Ct. at 254. Thus, an "algorithm" required both a mathematical problem and a solution procedure. A "formula" does not present or solve a mathematical problem, but merely expresses a relationship in mathematical terms. A "formula," even under Benson's definition, is not an algorithm.

The district court granted summary judgment in favor of Corazonix because "the claims of the '459 patent are drawn to a nonstatutory mathematical algorithm and, as such, are unpatentable pursuant to the provisions of 35 U.S.C. § 101." This erroneous conclusion illustrates the confusion caused by Benson and its progeny.

When determining whether claims disclosing computer art or any other art describe patentable subject matter, this court must follow the terms of the statute. The Supreme Court has focused this court's inquiry on the statute, not on special rules for computer art or mathematical art or any other art.

The claims of the '459 patent define an apparatus and a process. Both are patentable subject matter within the language of section 101. To me, the Supreme Court's most recent message is clear: when all else fails (and the algorithm rule clearly has), consult the statute. On this basis, I, too, would reverse and remand.

== Kevin ==

A new and useful process or apparatus is patentable subject matter, as defined in 35 U.S.C. § 101:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

The Supreme Court has observed that Congress intended section 101 to include “anything under the sun that is made by man.” Diamond v. Chakrabarty, 447 U.S. 303, 309, 100 S.Ct. 2204, 2208, 65 L.Ed.2d 144, 206 USPQ 193, 197 (1980), quoting S.Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952). There are, however, qualifications to the apparent sweep of this statement. Excluded from patentability is subject matter in the categories of “laws of nature, physical phenomena, and abstract ideas”. Diamond v. Diehr, 450 U.S. 175, 185, 101 S.Ct. 1048, 1056, 67 L.Ed.2d 155, 209 USPQ 1, 7 (1981). A mathematical formula may describe a law of nature, a scientific truth, or an abstract idea. As courts have recognized, mathematics may also be used to describe steps of a statutory method or elements of a statutory apparatus. The exceptions to patentable subject matter derive from a lengthy jurisprudence, but their meaning was probed anew with the advent of computer-related inventions.

In Parker v. Flook, 437 U.S. 584, 591, 98 S.Ct. 2522, 2526, 57 L.Ed.2d 451, 198 USPQ 193, 198 (1978) the Court explained that the criterion for patentability of a claim that requires the use of mathematical procedures is not simply whether the claim “wholly pre-empts” a mathematical algorithm, but whether the claim is directed to a new and useful process, independent of whether the mathematical algorithm required for its performance is novel

In Diamond v. Diehr the Court explained that non-statutory status under section 101 derives from the “abstract”, rather than the “sweeping”, nature of a claim that contains a mathematical algorithm. The Court stated: “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.”

In considering a claim for compliance with 35 USC 101, it must be determined whether a scientific principle, law of nature, idea, or mental process, which may be represented by a mathematical algorithm, is included in the subject matter of the claim. If it is, it must then be determined whether such principle, law, idea, or mental process is applied in an invention of a type set forth in 35 USC 101.

This analysis has been designated the Freeman-Walter-Abele test for statutory subject matter. It is first determined whether a mathematical algorithm is recited directly or indirectly in the claim. If so, it is next determined whether the claimed invention as a whole is no more than the algorithm itself; that is, whether the claim is directed to a mathematical algorithm that is not applied to or limited by physical elements or process steps. Such claims are nonstatutory. However, when the mathematical algorithm is applied in one or more steps of an otherwise statutory process claim, or one or more elements of an otherwise statutory apparatus claim, the requirements of section 101 are met. The court explained in Abele, 684 F.2d at 907, 214 USPQ at 686:
[P]atentable subject matter [is not limited] to claims in which structural relationships or process steps are defined, limited or refined by the application of the algorithm.

The use of mathematical formulae or relationships to describe the electronic structure and operation of an apparatus does not make it nonstatutory.

That the product is numerical is not a criterion of whether the claim is directed to statutory subject matter. See Meyer, 688 F.2d at 796 n. 4, 215 USPQ at 198 n. 4 (explaining that so-called “negative rules” of patentability “were not intended to be separate tests for determining whether a claim positively recites statutory subject matter.”)

RADER, Circuit Judge, concurring.

Thus, I too conclude that the '459 patent claims patentable subject matter-not on the basis of a two-step post- Benson test, but on the basis of the patentable subject matter standards in title 35. Rather than perpetuate a nonstatutory standard, I would find that the subject matter of the '459 patent satisfies the statutory standards of the Patent Act.

Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

2010-03-03T13:21:33Z

Kevin: /* Kevin */ new section

Talk:Arrhythmia Research Technology, Inc. v. Corazonix Corp., 958 F.2d 1053 (1992)

2010-03-03T13:21:33Z

Kevin: /* Kevin */ new section

Talk:State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998)

2010-03-03T13:12:45Z

Kevin: /* Kevin */ new section

==Courtney==

The “Mathematical Algorithm” Exception

The Supreme Court has identified three categories of subject matter that are unpatentable, namely “laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185, 101 S.Ct. 1048. Of particular relevance to this case, the Court has held that mathematical algorithms are not patentable subject matter to the extent that they are merely abstract ideas. See Diehr, 450 U.S. 175, 101 S.Ct. 1048, passim; Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). In Diehr, the Court explained that certain types of mathematical subject matter, standing alone, represent nothing more than abstract ideas until reduced to some type of practical application, i.e., “a useful, concrete and tangible result.” Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.[4]

Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”-the smooth waveform.

Similarly, in Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992), we held that the transformation of electrocardiograph signals from a patient's heartbeat by a machine through a series of mathematical calculations constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it corresponded to a useful, concrete or tangible thing-the condition of a patient's heart.

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces “a useful, concrete and tangible result”-a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

If Signature's invention were patentable, any financial institution desirous of implementing a multi-tiered funding complex modelled (sic) on a Hub and Spoke configuration would be required to seek Signature's permission before embarking on such a project. This is so because the '056 Patent is claimed [sic] sufficiently broadly to foreclose virtually any computer-implemented accounting method necessary to manage this type of financial structure.

== Maura ==

Today, we hold that the transformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces "a useful, concrete and tangible result"--a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.

The district court erred by applying the Freeman-Walter-Abele test to determine whether the claimed subject matter was an unpatentable abstract idea. The Freeman-Walter-Abele test was designed by the Court of Customs and Patent Appeals, and subsequently adopted by this court, to extract and identify unpatentable mathematical algorithms in the aftermath of Benson and Flook. See In re Freeman, 573 F.2d 1237, 197 USPQ 464 (CCPA 1978) as modified by In re Walter, 618 F.2d 758, 205 USPQ 397 (CCPA 1980). The test has been thus articulated:
First, the claim is analyzed to determine whether a mathematical algorithm is directly or indirectly recited. Next, if a mathematical algorithm is found, the claim as a whole is further analyzed to determine whether the algorithm is "applied in any manner to physical elements or process steps," and, if it is, it "passes muster under § 101."

The test determines the presence of, for example, an algorithm. Under Benson, this may have been a sufficient indicium of nonstatutory subject matter. However, after Diehr and Alappat, the mere fact that a claimed invention involves inputting numbers, calculating numbers, outputting numbers, and storing numbers, in and of itself, would not render it nonstatutory subject matter, unless, of course, its operation does not produce a "useful, concrete and tangible result." Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557.7 After all, as we have repeatedly stated, every step-by-step process, be it electronic or chemical or mechanical, involves an algorithm in the broad sense of the term. Since § 101 expressly includes processes as a category of inventions which may be patented and § 100(b) further defines the word "process" as meaning "process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material," it follows that it is no ground for holding a claim is directed to nonstatutory subject matter to say it includes or is directed to an algorithm. This is why the proscription against patenting has been limited to mathematical algorithms....

If Signature's invention were patentable, any financial institution desirous of implementing a multi-tiered funding complex modelled (sic) on a Hub and Spoke configuration would be required to seek Signature's permission before embarking on such a project. This is so because the '056 Patent is claimed [sic] sufficiently broadly to foreclose virtually any computer-implemented accounting method necessary to manage this type of financial structure.

MPEP § 706.03(a) (1994). This acknowledgment is buttressed by the U.S. Patent and Trademark 1996 Examination Guidelines for Computer Related Inventions which now read:
Office personnel have had difficulty in properly treating claims directed to methods of doing business. Claims should not be categorized as methods of doing business. Instead such claims should be treated like any other process claims.

FOOTNOTE 10
As Judge Newman has previously stated,
[The business method exception] is ... an unwarranted encumbrance to the definition of statutory subject matter in section 101, that [should] be discarded as error-prone, redundant, and obsolete. It merits retirement from the glossary of section 101.... All of the "doing business" cases could have been decided using the clearer concepts of Title 35. Patentability does not turn on whether the claimed method does "business" instead of something else, but on whether the method, viewed as a whole, meets the requirements of patentability as set forth in Sections 102, 103, and 112 of the Patent Act.
In re Schrader, 22 F.3d 290, 298, 30 USPQ2d 1455, 1462 (Fed.Cir.1994) (Newman, J., dissenting).

== Kevin ==

The district court began its analysis by construing the claims to be directed to a process, with each “means” clause merely representing a step in that process. However, “machine” claims having “means” clauses may only be reasonably viewed as process claims if there is no supporting structure in the written description that corresponds to the claimed “means” elements. See In re Alappat, 33 F.3d 1526, 1540-41, 31 USPQ2d 1545, 1554 (Fed.Cir.1994) ( in banc ). This is not the case now before us.

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. The plain and unambiguous meaning of § 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in §§ 102, 103, and 112, ¶ 2.[2]

Thus, it is improper to read limitations into § 101 on the subject matter that may be patented where the legislative history indicates that Congress clearly did not intend such limitations. See Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204 (“We have also cautioned that courts ‘should not read into the patent laws limitations and conditions which the legislature has not expressed.’ ” (citations omitted)).

The Supreme Court has identified three categories of subject matter that are unpatentable, namely “laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185, 101 S.Ct. 1048. Of particular relevance to this case, the Court has held that mathematical algorithms are not patentable subject matter to the extent that they are merely abstract ideas.

Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way.

The district court erred by applying the Freeman-Walter-Abele test to determine whether the claimed subject matter was an unpatentable abstract idea.

First, the claim is analyzed to determine whether a mathematical algorithm is directly or indirectly recited. Next, if a mathematical algorithm is found, the claim as a whole is further analyzed to determine whether the algorithm is “applied in any manner to physical elements or process steps,” and, if it is, it “passes muster under § 101.”

As we pointed out in Alappat, 33 F.3d at 1543, 31 USPQ2d at 1557, application of the test could be misleading, because a process, machine, manufacture, or composition of matter employing a law of nature, natural phenomenon, or abstract idea is patentable subject matter even though a law of nature, natural phenomenon, or abstract idea would not, by itself, be entitled to such protection.[

The question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to[9] -process, machine, manufacture, or composition of matter-but rather on the essential characteristics of the subject matter, in particular, its practical utility.

Talk:Warner-Jenkinson Company v. Hilton Davis Chemical Co., 520 US 17 (1997)

2010-02-26T12:50:44Z

Kevin: /* Kevin */ new section

== Maura ==

Patentee brought infringement action against competitor, alleging that competitor's ultrafiltration method for purifying dye infringed patented method under doctrine of equivalents.

The Supreme Court, Justice Thomas, held that: (1) doctrine of equivalents is not inconsistent with Patent Act; (2) doctrine of equivalents must be applied to individual elements of patent claim, not to invention as a whole; (3) prosecution history estoppel does not apply whenever patent claim has been amended during application process, regardless of reasons for change; (4) patentee's addition of lower pH limit during application process did necessarily preclude application of doctrine of equivalents as to that element; (5) remand was required to determine whether reason for amending patent claim to add lower pH limit was sufficient to avoid prosecution history estoppel; (6) doctrine of equivalents does not require proof of intent; (7) doctrine of equivalents is not limited to equivalents disclosed within patent itself.
Reversed and remanded.

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

Nearly 50 years ago, this Court in Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), set out the modern contours of what is known in patent law as the “doctrine of equivalents.” Under this doctrine, a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is “equivalence” between the elements of the accused product or process and the claimed elements of the patented invention.

“What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” Id., at 609, 70 S.Ct., at 856-857.

Petitioner's primary argument in this Court is that the doctrine of equivalents, as set out in Graver Tank in 1950, did not survive the 1952 revision of the Patent Act, 35 U.S.C. § 100 et seq., because it is inconsistent with several aspects of that Act. In particular, petitioner argues: (1) The doctrine of equivalents is inconsistent with the statutory requirement that a patentee specifically “claim” the invention covered by a patent, § 112; (2) the doctrine circumvents the patent reissue process-designed to correct mistakes in drafting or the like-and avoids the express limitations on that process, §§ 251-252; (3) the doctrine is inconsistent with the primacy of the Patent and Trademark Office (PTO) in setting the scope of a patent through the patent prosecution process; and (4) the doctrine was implicitly rejected as a general matter by Congress' specific and limited inclusion of the doctrine in one section regarding “means” claiming, § 112, ¶ 6.

Absent something more compelling than the dubious negative inference offered by petitioner, the lengthy history of the doctrine of equivalents strongly supports adherence to our refusal in Graver Tank to find that the Patent Act conflicts with that doctrine. Congress can legislate the doctrine of equivalents out of existence any time it chooses. The various policy arguments now made by both sides are thus best addressed to Congress, not this Court.

B
We do, however, share the concern of the dissenters below that the doctrine of equivalents, as it has come to be applied since Graver Tank, has taken on a life of its own, unbounded by the patent claims. There can be no denying that the doctrine of equivalents, when applied broadly, conflicts with the definitional and public- notice functions of the statutory claiming requirement.

Each element contained in a patent claim is deemed material to defining the scope of the patented invention, and thus the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. It is important to ensure that the application of the doctrine, even as to an individual element, is not allowed such broad play as to effectively eliminate that element in its entirety. So long as the doctrine of equivalents does not encroach beyond the limits just described, or beyond related limits to be discussed infra, this page and 1050-1051, 1053, n. 8, and 1054, we are confident that the doctrine will not vitiate the central functions of the patent claims themselves.

In our view, holding that certain reasons for a claim amendment may avoid the application of prosecution history estoppel is not tantamount to holding that the absence of a reason for an amendment may similarly avoid such an estoppel. Mindful that claims do indeed serve both a definitional and a notice function, we think the better rule is to place the burden on the patent holder to establish the reason for an amendment required during patent prosecution. The court then would decide whether that reason is sufficient to overcome prosecution history estoppel as a bar to application of the doctrine of equivalents to the element added by that amendment. Where no explanation is established, however, the court should presume that the patent applicant had a substantial reason related to patentability for including the limiting element added by amendment. In those circumstances, prosecution history estoppel would bar the application of the doctrine of equivalents as to that element. The presumption we have described, one subject to rebuttal if an appropriate reason for a required amendment is established, gives proper deference to the role of claims in defining an invention and providing public notice, and to the primacy of the PTO in ensuring that the claims allowed cover only subject matter that is properly patentable in a proffered patent application. Applied in this fashion, prosecution history estoppel places reasonable limits on the doctrine of equivalents, and further insulates the doctrine from any feared conflict with the Patent Act.

Winans v. Denmead, 15 How. 330, 343, 14 L.Ed. 717 (1854), we described the doctrine of equivalents as growing out of a legally implied term in each patent claim that “the claim extends to the thing patented, however its form or proportions may be varied.” Under that view, application of the doctrine of equivalents involves determining whether a particular accused product or process infringes upon the patent claim, where the claim takes the form-half express, half implied-of “X and its equivalents.”

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.”
If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

The Federal Circuit explained this factor by suggesting that an alleged infringer's behavior, be it copying, designing around a patent, or independent experimentation, indirectly reflects the substantiality of the differences between the patented invention and the accused device or process. According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

The known interchangeability of substitutes for an element of a patent is one of the express objective factors noted by Graver Tank as bearing upon whether the accused device is substantially the same as the patented invention. Independent experimentation by the alleged infringer would not always reflect upon the objective question whether a person skilled in the art would have known of the interchangeability between two elements, but in many cases it would likely be probative of such knowledge.

See, e.g., Union Paper-Bag Machine Co. v. Murphy, 97 U.S., at 125 (“[I]n determining the question of infringement, the court or jury, as the case may be, ... are to look at the machines or their several devices or elements in the light of what they do, or what office or function they perform, and how they perform it, and to find that one thing is substantially the same as another, if it performs substantially the same function in substantially the same way to obtain the same result”); Winans v. Denmead, 15 How., at 344 (“[It] is a question for the jury” whether the accused device was “the same in kind, and effected by the employment of [the patentee's] mode of operation in substance”).

An analysis of the role played by each element in the context of the specific patent claim will thus inform the inquiry as to whether a substitute element matches the function, way, and result of the claimed element, or whether the substitute element plays a role substantially different from the claimed element.

==Courtney==

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

(f) The Court also rejects petitioner's proposal that in order to minimize conflict with the notice function of patent claims, the doctrine of equivalents should be limited to equivalents that are disclosed within the patent itself. Insofar as the question under the doctrine is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. Pp. 1052-1053.

(h) In the Court's view, the particular linguistic framework used to determine “equivalence,” whether the so-called “triple identity” test or the “insubstantial differences” test, is less important than whether the test is probative of the essential inquiry: Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? Different linguistic frameworks may be more suitable to different cases, depending on their particular facts. The Court leaves it to the Federal Circuit's sound judgment in this area of its special expertise to refine the formulation of the test for equivalence in the orderly course of case-by-case determinations. P. 1054.
The jury found that the '746 patent was not invalid and that Warner-Jenkinson infringed upon the patent under the doctrine of equivalents. The jury also found, however, that Warner-Jenkinson had not intentionally infringed, and therefore awarded only 20% of the damages sought by Hilton Davis. The District Court denied Warner-Jenkinson's post-trial motions, and entered a permanent injunction prohibiting Warner-Jenkinson from practicing ultrafiltration below 500 p.s.i.g. and below 9.01 pH. A fractured en banc Court of Appeals for the Federal Circuit affirmed. 62 F.3d 1512 (1995).

The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process. Id., at 1521-1522. The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner-Jenkinson process was not substantially different from the ultrafiltration process disclosed in the '746 patent. Id., at 1525.
In determining equivalents, things equal to the same thing may not be equal to each other and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” Id., at 609, 70 S.Ct., at 856-857.

Considering those factors, the Court viewed the difference between the chemical element claimed in the patent and the substitute element to be “colorable only,” and concluded that the trial court's judgment of infringement under the doctrine of equivalents was proper. Id., at 612, 70 S.Ct., at 858.

If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

According to the Federal Circuit, a person aiming to copy or aiming to avoid a patent is imagined to be at least marginally skilled at copying or avoidance, and thus intentional copying raises an inference-rebuttable by proof of independent development-of having only insubstantial differences, and intentionally designing around a patent claim raises an inference of substantial differences. This explanation leaves much to be desired. At a minimum, one wonders how ever to distinguish between the intentional copyist making minor changes to lower the risk of legal action and the incremental innovator designing around the claims, yet seeking to capture as much as is permissible of the patented advance.

Insofar as the question under the doctrine of equivalents is whether an accused element is equivalent to a claimed element, the proper time for evaluating equivalency-and thus knowledge of interchangeability between elements-is at the time of infringement, not at the time the patent was issued. And rejecting the milder version of petitioner's argument necessarily rejects the more severe proposition that equivalents must not only be known, but must also be actually disclosed in the patent in order for such equivalents to infringe upon the patent.

Today we adhere to the doctrine of equivalents. The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, we reverse its judgment and remand the case for further proceedings consistent with this opinion.

== Kevin ==

The Supreme Court, Justice Thomas, held that: (1) doctrine of equivalents is not inconsistent with Patent Act; (2) doctrine of equivalents must be applied to individual elements of patent claim, not to invention as a whole; (3) prosecution history estoppel does not apply whenever patent claim has been amended during application process, regardless of reasons for change; (4) patentee's addition of lower pH limit during application process did necessarily preclude application of doctrine of equivalents as to that element; (5) remand was required to determine whether reason for amending patent claim to add lower pH limit was sufficient to avoid prosecution history estoppel; (6) doctrine of equivalents does not require proof of intent; (7) doctrine of equivalents is not limited to equivalents disclosed within patent itself.

1. The Court adheres to the doctrine of equivalents. Pp. 1046-1049.
(a) In Graver Tank, supra, at 609, 70 S.Ct., at 856-857, the Court, inter alia, described some of the considerations that go into applying the doctrine, such as the patent's context, the prior art, and the particular circumstances of the case, including the purpose for which an ingredient is used in the patent, the qualities it has when combined with the other ingredients, the function it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. Pp. 1046-1047.

(c) The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. The Court is concerned that the doctrine, as it has come to be broadly applied since Graver Tank, conflicts with the Court's numerous holdings that a patent may not be enlarged beyond the scope of its claims. The way to reconcile the two lines of authority is to apply the doctrine to each of the individual elements of a claim, rather than to the accused product or process as a whole. Doing so will preserve some meaning for each of a claim's elements, all of which are deemed material to defining the invention's scope. So long as the doctrine does not encroach beyond these limits, or beyond related limits discussed in the Court's opinion, infra, at 1049-1051, 1053-1054, n. 8, and 1054, it will not vitiate the central functions of patent claims to define the invention and to notify the public of the patent's scope. Pp. 1048-1049.

There are a variety of reasons why the PTO may request a change in claim language, and if the patent holder demonstrates that an amendment had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, the court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Here, it is undisputed that the upper limit of 9.0 pH was added to the '746 patent in order to distinguish the Booth patent, but the record before this Court does not reveal the reason for adding the lower 6.0 pH limit. It is therefore impossible to tell whether the latter reason could properly avoid an estoppel. Pp. 1049-1051.

The majority below held that the doctrine of equivalents continues to exist and that its touchstone is whether substantial differences exist between the accused process and the patented process. Id., at 1521-1522. The court also held that the question of equivalence is for the jury to decide and that the jury in this case had substantial evidence from which it could conclude that the Warner-Jenkinson process was not substantially different from the ultrafiltration process disclosed in the '746 patent. Id., at 1525.

It is telling that in each case this Court probed the reasoning behind the Patent Office's insistence upon a change in the claims. In each instance, a change was demanded because the claim as otherwise written was viewed as not describing a patentable invention at all-typically because what it described was encompassed within the prior art. But, as the United States informs us, there are a variety of other reasons why the PTO may request a change in claim language. Brief for United States as Amicus Curiae 22-23 counsel for the PTO also appearing on the brief). And if the PTO has been requesting changes in claim language without the intent to limit equivalents or, indeed, with the expectation that language it required would in many cases allow for a range of equivalents, we should be extremely reluctant to upset the basic assumptions of the PTO without substantial reason for doing so. Our prior cases have consistently applied prosecution history estoppel only where claims have been amended for a limited set of reasons, and we see no substantial cause for requiring a more rigid rule invoking an estoppel regardless of the reasons for a change.[7]

“[T]he substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.”
If the essential predicate of the doctrine of equivalents is the notion of identity between a patented invention and its equivalent, there is no basis for treating an infringing equivalent any differently from a device that infringes the express terms of the patent. Application of the doctrine of equivalents, therefore, is akin to determining literal infringement, and neither requires proof of intent.

Today we adhere to the doctrine of equivalents. The determination of equivalence should be applied as an objective inquiry on an element-by-element basis. Prosecution history estoppel continues to be available as a defense to infringement, but if the patent holder demonstrates that an amendment required during prosecution had a purpose unrelated to patentability, a court must consider that purpose in order to decide whether an estoppel is precluded. Where the patent holder is unable to establish such a purpose, a court should presume that the purpose behind the required amendment is such that prosecution history estoppel would apply. Because the Court of Appeals for the Federal Circuit did not consider all of the requirements as described by us today, particularly as related to prosecution history estoppel and the preservation of some meaning for each element in a claim, we reverse its judgment and remand the case for further proceedings consistent with this opinion.

Talk:Perkin-Elmer Corporation v. Computervision Corporation, 732 F2d 888 (1984)

2010-02-22T12:15:21Z

Kevin: /* Kevin */ new section

== Maura ==
The district court denied Perkin-Elmer's motions for a judgment of infringement notwithstanding the verdict ("JNOV")

ISSUES
(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.
(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.
(3) Whether the decision of the Ninth Circuit should be reviewed.
(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

When a party moves for JNOV, the trial court must consider all the evidence in a light most favorable to the non-mover, must draw reasonable inferences favorable to the non-mover, must not determine credibility of witnesses, and must not substitute its choice for that of the jury between conflicting elements in the evidence. Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506, 1512, 220 USPQ 929, 936 (Fed.Cir.1984); Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1546, 220 USPQ 193, 197 (Fed.Cir.1983). Following those guidelines, the court determines whether the evidence so viewed constitutes "substantial evidence" in support of the jury's findings and, if so, whether those findings can support the legal conclusions necessarily drawn by the jury in accord with its instructions enroute to its verdict.

On appeal from denial of a motion for JNOV, appellant must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) implied from the jury's verdict cannot in law be supported by those findings. Id., 727 F.2d at 1517, 220 USPQ at 935-36.

The jury was instructed under 35 U.S.C. Sec. 1022 that there is no anticipation "unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference". See e.g., Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771, 218 USPQ 781, 789 (Fed.Cir.1983). From that instruction and the jury's verdict, the law presumes that the jury found no anticipation under Sec. 102 because of differences (discussed infra ) between the claimed inventions and the prior art. Having shown no basis for determining that the record is devoid of substantial evidence to support that finding, Computervision has not met its burden on appeal, i.e., to establish that a reasonable juror could not have found that Computervision failed to overcome the presumption of novelty included within the presumption of validity mandated by 35 U.S.C. Sec. 282.

3. Obviousness

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 1033 involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.

Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-59, 220 USPQ 763, 769-70 (Fed.Cir.1984); Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983). The presumption remains intact even upon proof of prior art not cited by the Patent and Trademark Office (PTO), Raytheon, supra, 724 F.2d at 960, 220 USPQ at 599, though such art, if more relevant than that cited, may enable the challenger to sustain its burden. Id.

Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

Though the Ninth Circuit's opinion did not use the word "equivalence", that court was presumably aware that the jury had been instructed on the doctrine and its opinion spoke the language of equivalency ("functions in a strikingly similar way"; "the only difference"; "differences ... are miniscule"; "Otherwise ... identical"; "A minor adjustment ... not ... beyond the reach"; "variations ... within the range" ). Assessing equivalency involves a determination of whether the claimed invention and alleged infringing device, which are different (there would otherwise be literal infringement), perform substantially the same function in substantially the same way to give the same or substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950). If equivalence appears, infringement will be found unless (1) arguments or amendments made by applicant during prosecution (prosecution history estoppel) estop the patentee from asserting a range of equivalence broad enough to encompass the accused product or process; or (2) the equivalent device is within the public domain, i.e., found in the prior art, Carmen Industries, Inc. v. Wahl, 724 F.2d 932, 942, 220 USPQ 481, 489 (Fed.Cir.1983); Thomas & Betts Corp. v. Litton Systems, Inc., 720 F.2d 1572, 1579-80, 220 USPQ 1, 6-7 (Fed.Cir.1983). Determining the existence of either condition (1) or condition (2) does not require reassessment of validity. See e.g., Carmen Industries, supra, 724 F.2d at 936 n. 2, 937 n. 5, 220 USPQ at 484 n. 2, 485 n. 5. Nor does determination of the existence of either condition necessitate a re-interpretation of the claims as written. Computervision's assumptions concerning a Ninth Circuit interpretation of the claims are unsupported in the record.

We recognize that a court that established the law of a case could elect to review its earlier decision and change it if one of three "exceptional circumstances" exist: (1) the evidence on subsequent trial was substantially different; (2) controlling authority has intervened; or (3) the earlier decision was clearly erroneous and would work a manifest injustice. Central Soya, supra, 723 F.2d at 1580, 220 USPQ at 495. Revisions in the law of the case occur "very infrequently" when an appellate court is asked to review the decision of a coordinate court. 1B Moore's Federal Practice p 0.404 [4.-5 at 138].

Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect.

== Kevin ==

At argument, the court stated that the findings of the jury supported a conclusion of non-obviousness, that there was considerable evidence supporting those findings, and that non-obviousness was clear as a matter of law. The court also noted that a patent is presumed valid, that the burden of persuasion remains with the party asserting invalidity, and that Computervision did not satisfy that burden. In accordance with the Ninth Circuit's mandate and in full compliance with Sarkisian, the district court determined that the patents were valid and infringed and granted Perkin-Elmer's motion for entry of judgment so stating.

ISSUES
(1) Whether the district court erred in denying Computervision's motion for JNOV on validity.
(2) Whether the district court abused its discretion in denying Computervision's motion for new trial based on absence of a jury trial of a fact issue underlying the determination of nonobviousness.
(3) Whether the decision of the Ninth Circuit should be reviewed.
(4) Whether the district court abused its discretion in denying Computervision's motions for new trial and to vacate the judgment based on allegations of fraudulent conduct.

Determining obviousness/nonobviousness under 35 U.S.C. Sec. 103[3] involves factual inquiries into: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness, e.g., long felt need, commercial success, failure of others, copying, unexpected results. See, e.g., Environmental Designs, Ltd. v. Union Oil Co. of Calif., 713 F.2d 693, 695, 218 USPQ 865, 867 (Fed.Cir.1983); Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1379-82, 217 USPQ 1281, 1283-85 (Fed.Cir.1983). The critical question, as Sec. 103 makes plain, is whether the invention as a whole would have been obvious to one of ordinary skill in the art at the time it was made.
Included within the presumption of validity mandated by 35 U.S.C. Sec. 282 is a presumption of nonobviousness which the patent challenger must overcome by proving facts with clear and convincing evidence.

Computervision summarily asserts in its brief, without explanation, that the Reed and Schmidt disclosures are applicable. That bare assertion cannot possibly satisfy Computervision's appellate burden of showing that no reasonable juror could have concluded that it had failed to prove facts rendering the '763 patent claims invalid.

CONCLUSION ON VALIDITY
Nothing in the prior art anticipates or, considered singularly or as a whole, would have suggested, the inventions claimed in the '015 and '763 patents. The objective evidence is strong in support of the judge's ruling upholding the jury's verdict on validity. Thus, the district court did not err in denying Computervision's motion for JNOV.

AFFIRMED
DAVIS, Circuit Judge, dissenting.
I am concerned that the District Court denied the appellant's motion for new trial on validity simply because the judge felt compelled to do so by the Ninth Circuit's ruling on infringement, despite the District Court's strongly expressed views (in argument) that (a) the Ninth Circuit's interpretation of the patent (in the infringement appeal), without any necessary jury findings supporting that position, was "absurd", "not according to me", "not according to the jury", a position "with which I strongly take issue",[10] (b) that the patents could not both be valid and infringed, but (c) that the District Court felt bound to uphold validity by the Ninth Circuit's infringement decision because that appellate court interpreted the patents broadly as a "conclusion of law", though the District Court clearly considered that that interpretation, if proper, would necessarily depend on findings of fact to be made by the jury but not actually made in this case.

Talk:Graver Tank & Mfg. Co. v. Linde Air Products Co. 339 US 605 (1950)

2010-02-22T11:59:50Z

Kevin: /* Kevin */ new section

== Maura ==
3. The doctrine of equivalents is founded on the theory that, if two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even though they differ in name, form or shape. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. P. 339 U. S. 609.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 97 U. S. 125. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U. S. 647, 101 U. S. 655, although the area of equivalence may vary under the circumstances

In its early development, the doctrine was usually applied in cases involving devices where there was equivalence in mechanical components. Subsequently, however, the same principles were also applied to compositions, where there was equivalence between chemical ingredients. Today the doctrine is applied to mechanical or chemical equivalents in compositions or devices

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.
Affirmed.

==Courtney==

2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent.

3. The doctrine of equivalents is founded on the theory that, if two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even though they differ in name, form or shape. Pp. 339 U. S. 608- 609.

4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. P. 339 U. S. 609.

At the outset it should be noted that the single issue before us is whether the trial court's holding that the four flux claims have been infringed will be sustained. Any issue as to the validity of these claims was unanimously determined by the previous decision in this Court, and attack on their validity cannot be renewed now by reason of limitation on grant of rehearing. The disclosure, the claims, and the prior art have been adequately described in our former opinion and in the opinions of the courts below. In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out, and that is the end of it.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art.

The question which thus emerges is whether the substitution of the manganese, which is not an alkaline earth metal, for the magnesium, which is, under the circumstances of this case, and in view of the technology and the prior art, is a change of such substance as to make the doctrine of equivalents inapplicable; or, conversely, whether, under the circumstances, the change was so insubstantial that the trial court's invocation of the doctrine of equivalents was justified.

Nevertheless it invoked the judicial "doctrine of equivalents" to broaden the claim for "alkaline earth metals" so as to embrace "manganese." On the ground that "the fact that manganese is a proper substitute . . . is fully disclosed in the specification" of respondent's patent, it concluded that "no determination need be made whether it is a known chemical fact outside the teachings of the patent that manganese is an equivalent. . . ."

The Court now allows the doctrine of equivalents to erase those time-honored rules. Moreover, a doctrine which is said to protect against practicing "a fraud on a patent" is used to extend a patent to a composition which could not be patented. For manganese silicate had been covered by prior patents, now expired. Thus, we end with a strange anomaly: a monopoly is obtained on an unpatented and unpatentable article.

== Kevin ==

1. This Court affirms the finding of the two courts below that, under the doctrine of equivalents, certain flux claims of Jones patent No. 2,043,960, for an electric welding process and for fluxes, or compositions, to be used therewith were infringed. Pp. 339 U. S. 606-612.
2. The essence of the doctrine of equivalents is that one may not practice a fraud on a patent. P. 339 U. S. 608.
3. The doctrine of equivalents is founded on the theory that, if two devices do the same work in substantially the same way and accomplish substantially the same result, they are the same, even though they differ in name, form or shape. Pp. 339 U. S. 608- 609.
4. In determining equivalents, consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with other ingredients, the functions which it is intended to perform, and whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was. P. 339 U. S. 609.
5. A finding of equivalence is a determination of fact to be made by the trial court, and the trial court's decision should not be disturbed unless clearly erroneous. Pp. 339 U. S. 609-610.
6. On the record in this case, involving a claim of a combination of alkaline earth metal silicate and calcium fluoride, the trial court was justified in finding that the substitution in the accused composition of manganese silicate (which is not an alkaline earth metal silicate) for magnesium silicate (which is an alkaline earth metal silicate), where the two compositions were substantially identical in operation and result, was so insubstantial, in view of the technology and the prior art, that the patent was infringed under the doctrine of equivalents. Pp. 339 U. S. 610-612.

But courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for -- indeed, encourage -- the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism, and would be subordinating substance to form. It would deprive him of the benefit of his invention, and would foster concealment, rather than disclosure, of inventions, which is one of the primary purposes of the patent system.

The doctrine of equivalents evolved in response to this experience. The essence of the doctrine is that one may not practice a fraud on a patent. Originating almost a century ago in the case of @ 56 U. S. 42. The theory on which it is founded is that, "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape."

The wholesome realism of this doctrine is not always applied in favor of a patentee, but is sometimes used against him. Thus, where a device is so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the doctrine of equivalents may be used to restrict the claim and defeat the patentee's action for infringement. Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 170 U. S. 568.

What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula, and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and, by the same token, things for most purposes different may sometimes be equivalents. Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.

A finding of equivalence is a determination of fact. Proof can be made in any form: through testimony of experts or others versed in the technology; by documents, including texts and treatises; and, of course, by the disclosures of the prior art. Like any other issue of fact, final determination requires a balancing of credibility, persuasiveness, and weight of evidence. It is to be decided by the trial court, and that court's decision, under general principles of appellate review, should not be disturbed unless clearly erroneous. Particularly is this so in a field where so much depends upon familiarity with specific scientific problems and principles not usually contained in the general storehouse of knowledge and experience.

It is difficult to conceive of a case more appropriate for application of the doctrine of equivalents. The disclosures of the prior art made clear that manganese silicate was a useful ingredient in welding compositions. Specialists familiar with the problems of welding compositions understood that manganese was equivalent to, and could be substituted for, magnesium in the composition of the patented flux ,and their observations were confirmed by the literature of chemistry. Without some explanation or indication that Lincolnweld was developed by independent research, the trial court could properly infer that the accused flux is the result of imitation, rather than experimentation or invention. Though infringement was not literal, the changes which avoid literal infringement are colorable only. We conclude that the trial court's judgment of infringement respecting the four flux claims was proper, and we adhere to our prior decision on this aspect of the case.

Talk:Atlas Powder v. E.I. du Pont de Nemours, 750 F2d 1569 (1984)

2010-02-19T00:53:58Z

Kevin: /* Kevin */ new section

==Courtney==

Patent infringement action was brought. The United States District Court for the Northern District of Texas, Patrick E. Higginbotham, J., 588 F.Supp. 1455, found the patent at issue valid and infringed, and appeal was taken. The Court of Appeals, Baldwin, Circuit Judge, held that product claims 1-5, 7, 12-14, and 16-17 of U.S. Patent No. 3,447,978, relating to blasting agent, chemical mixtures that are relatively insensitive to normal modes of detonation but can be made to detonate with high strength explosive primers, were valid and infringed.

The District Court Proceedings A non-jury trial was held between January 28 and February 2, 1982. Du Pont asserted invalidity of the '978 patent under sections 102(a), 103, and 112, “fraud” on the Patent and Trademark Office (PTO), and noninfringement. The district court rejected those assertions for the product claims at issue, holding that: (1) the claimed invention was not anticipated by the prior art; (2) the claimed invention would not have been obvious in view of the prior art; (3) the claims were not invalid for the patent's failure to comply with the “best mode”, enablement, and “overclaiming” requirements of 35 U.S.C. § 112; (4) the patent was not procured by “fraud” on the PTO; and (5) Du Pont's products infringed the claims under the doctrine of equivalence. On appeal, Du Pont contests those holdings, except for the one on best mode.

The district court denied Atlas increased damages and attorney fees because Du Pont had not willfully infringed the '978 patent claims and the case was not “exceptional”. The district court also held that product claims 6, 13, and 15 were not infringed and that process claims 18-30 were invalid. Atlas has not appealed those holdings.

Issues (1) Whether the district court was clearly erroneous in finding the invention of the patent claims at issue not anticipated by the prior art.

(2) Whether the district court erred in holding that the invention of the patent claims at issue would not have been obvious.

(3) Whether the district court erred in holding the patent claims at issue not invalid because of nonenablement.

(4) Whether the district court erred in holding no “fraud” on the PTO, i.e., no inequitable conduct.

(5) Whether the district court was clearly erroneous in finding that Du Pont's products infringed the '978 claims under the doctrine of equivalents.

Under 35 U.S.C. § 282, a patent is presumed valid, and the one attacking validity has the burden of proving invalidity by clear and convincing evidence.

Du Pont argues that, because its emulsion product was patented after the '978 patent issued, its product avoids infringement by equivalence. According to Du Pont, “ so long as direct infringement is lacking, the grant of a patent to an accused infringer constitutes a prima facie determination of non-equivalence and, accordingly, of non-infringement” (Du Pont's emphasis). Atlas disagrees. So do we.

Du Pont concedes that, if Atlas patents A + B + C and Du Pont then patents the improvement A + B + C + D, Du Pont is liable to Atlas for any manufacture, use, or sale of A + B + C + D because the latter directly infringes claims to A + B + C. Du Pont urges, however, that it is not liable for manufacture, use, or sale of patented improvement A + B + C', even though A + B + C' is “equivalent” to A + B + C. We reject Du Pont's attempted distinction. Whether Du Pont makes A + B + C + D or A + B + C', Du Pont has used the gist of Atlas' invention to devise a patentable composition. There is no compelling reason to hold Du Pont liable for infringement in one instance but not the other.[3]

A patent is not the grant of a right to make or use or sell. It does not, directly or indirectly, imply any such right. It grants only the right to exclude others. The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents *1581 granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and cannot be practiced unless by license thereunder.

Having considered all of Du Pont's arguments, the district court's decision that the '978 patent claims on appeal (1-5, 7, 12-14, and 16-17) are not invalid under 35 U.S.C. §§ 102, 103, and 112, that there was no inequitable conduct before the PTO, and that the claims on appeal were infringed, is affirmed.

== Kevin ==

Issues (1) Whether the district court was clearly erroneous in finding the invention of the patent claims at issue not anticipated by the prior art.
(2) Whether the district court erred in holding that the invention of the patent claims at issue would not have been obvious.
(3) Whether the district court erred in holding the patent claims at issue not invalid because of nonenablement.
(4) Whether the district court erred in holding no “fraud” on the PTO, i.e., no inequitable conduct.
(5) Whether the district court was clearly erroneous in finding that Du Pont's products infringed the '978 claims under the doctrine of equivalents.

That is incorrect. Though the introduction of prior art not before the PTO may facilitate meeting the challenger's ability to meet the burden of proof on invalidity, the presumption remains intact, the burden of persuasion remains on the challenger, and the “clear and convincing” standard does not change. See, e.g., Jervis B. Webb Co. v. Southern Systems, Inc., 742 F.2d 1388, 1392 & n. 4, 222 USPQ 943, 945 & n. 4 (Fed.Cir.1984);

IV. Obviousness Though an invention is not anticipated by 35 U.S.C. § 102, a patent should not issue if the differences between the claimed invention and prior art are such that the invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made. 35 U.S.C. § 103. In assessing nonobviousness a court should answer certain factual inquiries: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art; (3) the differences between the claimed invention and the prior art; and (4) so-called “secondary” considerations, e.g., long felt need, unexpected results, commercial success. See, e.g., Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d at 1538, 218 USPQ at 876; Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575, 222 USPQ 743, 746 (Fed.Cir.1984). The “secondary” considerations, when present, may assist the court in determining nonobviousness without falling prey to hindsight reasoning.

To be enabling under § 112, a patent must contain a description that enables one skilled in the art to make and use the claimed invention. Raytheon Co. v. Roper Corp., 724 F.2d at 960, 220 USPQ at 599. That some experimentation is necessary does not preclude enablement; the amount of experimentation, however, must not be unduly extensive. See, e.g., W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1557, 220 USPQ 303, 316 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984); In re Angstadt, 537 F.2d 498, 503, 190 USPQ 214, 218 (CCPA 1976). Determining enablement is a question of law. Raytheon Co. v. Roper Corp., 724 F.2d at 959-60, 220 USPQ at 599.

Du Pont contends that, because the '978 examples are “merely prophetic”, they do not aid one skilled in the art in making the invention.[1] Because they are prophetic, argues Du Pont, there can be no guarantee that the examples would actually work.
Use of prophetic examples, however, does not automatically make a patent non-enabling. The burden is on one challenging validity to show by clear and convincing evidence that the prophetic examples together with other parts of the specification are not enabling. Du Pont did not meet that burden here. To the contrary, the district court found that the “prophetic” examples of the specification were based on actual experiments that were slightly modified in the patent to reflect what the inventor believed to be optimum, and hence, they would be helpful in enabling someone to make the invention.

VI. Inequitable Conduct This court has held “inequitable conduct” in the PTO to be a more appropriate label than “fraud”. J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 at 1559 (Fed.Cir.1984). Hence, this opinion will use the phrase “inequitable conduct” rather than “fraud”.
Inequitable conduct requires proof by clear and convincing evidence of a threshold degree of materiality of the nondisclosed*1578 or false information. That threshold can be established by any of four tests: (1) objective “but for”; (2) subjective “but for”; (3) “but it may have been”; and (4) 37 C.F.R. § 1.56(a), i.e., whether there is a substantial likelihood that a reasonable examiner would have considered the omitted or false information important in deciding whether to allow the application to issue as a patent. Slip op. at 10. The PTO standard is the appropriate starting point because it is the broadest and most closely aligns with how one ought to conduct business with the PTO. Id.
Inequitable conduct also requires proof of a threshold intent. That intent need not be proven with direct evidence. It may be proven by showing acts the natural consequences of which are presumably intended by the actor. Id. Proof of deliberate scheming is not needed; gross negligence is sufficient. Gross negligence is present when the actor knew or should have known of the materiality of a withheld reference. Id. at 1560. On the other hand, simple negligence, oversight or an erroneous judgment made in good faith is insufficient. Id.
Once the thresholds of materiality and intent are established as facts, the court must balance them and determine as a matter of law whether the scales compel a conclusion that inequitable conduct occurred. Id. If the court reaches that conclusion, it must hold the patent claims at issue unenforceable.

Doctrine of Equivalents
A product that does not literally infringe can infringe under the doctrine of equivalents. Designed to protect a patentee from an infringer who appropriates the invention but avoids the literal language of the claims, the doctrine allows a finding of infringement when the accused product and claimed invention perform substantially the same function in substantially the same way to yield substantially the same result. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 608-09, 70 S.Ct. 854, 856, 94 L.Ed. 1097 (1950); Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 900, 221 USPQ 669, 679 (Fed.Cir.1984), cert. denied, --- U.S. ----, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984). The district court found that the Du Pont products and the claimed invention are equivalent, and Du Pont has not shown that finding to be clearly erroneous.

Such consideration makes sense. Where, as here, the accused product avoids literal infringement by changing one ingredient*1580 of a claimed composition, it is appropriate for a court to consider in assessing equivalence whether the changed ingredient has the same purpose, quality, and function as the claimed ingredient. If it does, the accused and claimed products should meet the Graver Tank tripartite test of “function, way, and result”.
That the district court focused on the function, quality, and purpose of the emulsifying agents does not mean it ignored the basic tripartite test which it expressly referred to in the opinion. We infer from that express reference, and from the opinion as a whole, that the district court did in fact find that the “function, way, and result” test was satisfied. See ACS Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1582, 221 USPQ 929, 936 (Fed.Cir.1984) (this court will infer findings that were obviously necessary to the court's opinion).

Du Pont concedes that, if Atlas patents A + B + C and Du Pont then patents the improvement A + B + C + D, Du Pont is liable to Atlas for any manufacture, use, or sale of A + B + C + D because the latter directly infringes claims to A + B + C. Du Pont urges, however, that it is not liable for manufacture, use, or sale of patented improvement A + B + C', even though A + B + C' is “equivalent” to A + B + C. We reject Du Pont's attempted distinction. Whether Du Pont makes A + B + C + D or A + B + C', Du Pont has used the gist of Atlas' invention to devise a patentable composition. There is no compelling reason to hold Du Pont liable for infringement in one instance but not the other.[3]
We agree with Bendix Corp. v. United States, 199 USPQ 203 (Ct.Cl. Trial Div.1978), aff'd, 600 F.2d 1364, 220 Ct.Cl. 507, 204 USPQ 617 (1979). There the trial judge said that where defendant has appropriated the material features of the patent in suit, infringement will be found “even when those features have been supplemented and modified to such an extent that the defendant may be entitled to a patent for the improvement.” 199 USPQ at 221-22. Though Du Pont argues that cases from other courts support a contrary result, we are not bound by those cases and in any event find them unpersuasive.[4]

A patent is not the grant of a right to make or use or sell. It does not, directly or indirectly, imply any such right. It grants only the right to exclude others. The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents *1581 granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and cannot be practiced unless by license thereunder.
Another reason sometimes advanced for supposing that the structure of the second does not infringe the claim of the first patent is that the Patent Office has declared that a patentable difference exists. The premise is sound, but not the conclusion. In examining the second application, the Patent Office has no concern with the scope of the claim of the first, and does not and must not pay any attention thereto. It is concerned only with the early disclosure by the specification and drawings. Patentable difference does not of itself tend to negative infringement. It may just as well be based upon infringement, plus improvement; and improvement may lie in addition, simplification, or variance.

Du Pont further contends that the district court erred in considering the “heart of the invention” in its infringement analysis. We disagree. Although there is no legally recognized “essence” or “heart” of the invention in determining validity, W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed.Cir.1983), cert. denied, --- U.S. ----, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984), it can be applicable in a determination of infringement under the doctrine of equivalents. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1567, 220 USPQ 97, 101 (Fed.Cir.1983). Moreover, the district court's “heart of the invention” analysis was supplemental to its finding that the Graver Tank tripartite test was satisfied.

Talk:Gould v. Hellwarth, 472 F2d 1383 (1973)

2010-02-19T00:39:20Z

Kevin: /* Kevin */ new section

==Courtney==

Patent interference proceeding. The Board of Interference Examiners of the United States Patent Office, Interference No. 94,837, awarded priority of invention to junior party, and the senior party appealed. The Court of Customs and Patent Appeals, Lane, J., held that senior party's application for patent on a so-called “Q-switched” or “Giant Pulse” laser was properly denied on ground that the disclosure of the application was not adequate to enable a person skilled in the art to make an operable device.
The determinative issue is whether the disclosure of the Gould application was adequate to enable a person skilled in the art to make an operable device ( 35 U.S.C. § 112). We agree with the board that it was not and affirm its decision.

Hellwarth asserted no date of invention prior to Gould's filing date. No priority evidence was submitted by either party and both parties rely on their filing dates.

This brief history of the attainment of the final operating lasers gives firm support to the board's conclusion that the Gould application was insufficient to teach a person skilled in the art how to make a laser. Whether the “person skilled in the art” is viewed in terms of the laser art, even though an operable laser had not yet been made, or with regard to the art to which the laser “is most nearly connected” (35 USC 112) is not material. The board, as well as the witnesses, considered the case in light of what would be taught to a highly trained person knowledgeable in the fields of microwave masers, spectroscopy, atomic physics and aware of published proposals for making a laser, and we do the same.

We conclude that the Gould application involved herein does not provide an enabling disclosure of how to make the subject matter of the counts. The decision of the board awarding priority of invention to Hellwarth is accordingly affirmed.

== Kevin ==

The Gould specification has much disclosure but much work had to be done subsequent to the filing of the application before an operative laser was made. The patent statutes do not contemplate grant of patents for such a disclosure which is merely a fertile field for experimentation. Cf. In re Joliot et al. * * * [47 CCPA 722, 270 F.2d 954, 123 USPQ 344 (1959);] In re Wooddy, Jr. et al. * * * [51 CCPA 1317, 331 F.2d 636, 141 USPQ 518 (1964).]

The testimony of appellant's witnesses was generally in agreement with Lengyel's view that the application does not disclose a complete set of parameters for a laser as well as his observations as to what knowledge was necessary to produce an operable laser. Opinions of Bloom and Fowles contrary to the board on the ultimate question of whether the Gould disclosure was adequate to enable a person skilled in the art to make an operable laser are incompatible with their testimony as well as that of Lengyel and the other evidence.
In arguing that he does disclose the parameters necessary for a particular laser, appellant states that “[p]erhaps the best example of a complete description of a specific embodiment in the Gould application” is a portion which suggests use of “a gaseous atmosphere comprising a mixture of sodium and *1388 mercury” as the working medium. However, both Lengyel, in 1967, and Bloom, in 1968, testified that no sodium-mercury laser had been known to operate. In view of the widespread efforts to obtain laser action in different media which the record shows followed Maiman's initial success in 1960, no basis is seen for accepting this alleged “complete description” as teaching how to make an operable laser.
Appellant also refers to TRG's having constructed an operable helium-cesium laser “after the restrictions on Gould were relaxed enough to permit him to make significant contributions to the development.” However, it is plain from the application and the testimony that neither physical dimensions nor particular operating conditions for such a laser are given in the Gould application. Also it was not until between January and April of 1962 that TRG's optically pumped helium-cesium laser was operated. By that time, the state of the art had been advanced by the successful operation of the ruby laser by Maiman and the helium-cesium laser by Javan and his associates. Additionally, a nearly confocal arrangement of mirrors, based on a proposal made by Bell Laboratories in 1961 and not on the Gould disclosure, was used.[14] These circumstances are inconsistent with any claim that the Gould application adequately disclosed how to make an operable helium-cesium laser.
Nor does a claim by appellant that his application “discloses the ruby laser” find any factual support. The application merely lists ruby as a possible alternative medium with the suggestion that it be a single crystal. Information as to the type, size or orientation of the crystal and exactly how it is to be excited is not given. While ruby, in certain forms, was a known maser material, reports of TRG work made of record show that its workers considered it as a laser material in early 1960 but rejected it. Maiman made extensive investigation before finding that a particular ruby material, a pink ruby, would provide an operative laser under particular conditions.
Appellant also refers to the action of the examiner in denying appellee's motion to dissolve for insufficiency of the Gould disclosure. What significance that action might ordinarily have is overcome by the fact that the examiner did not have the benefit of all the evidence, including particularly the testimony of the witnesses, which persuades us that the disclosure was not adequate.
We conclude that the Gould application involved herein does not provide an enabling disclosure of how to make the subject matter of the counts. The decision of the board awarding priority of invention to Hellwarth is accordingly affirmed.
Affirmed.

Talk:In re Brana, 51 F.3d 1560 (1995)

2010-02-19T00:36:31Z

Kevin: /* Kevin */ new section

==Courtney==

At issue in this case is an important question of the legal constraints on patent office examination practice and policy. The question is, with regard to pharmaceutical inventions, what must the applicant prove regarding the practical utility or usefulness of the invention for which patent protection is sought.

The requirement that an invention have utility is found in 35 U.S.C. Sec. 101: "Whoever invents ... any new and useful ... composition of matter ... may obtain a patent therefor...." (emphasis added). It is also implicit in Sec. 112 p 1, which reads: 13

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 14

Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it. 15

The Board gives two reasons for the rejection;13 we will consider these in turn.

The first basis for the Board's decision was that the applicants' specification failed to disclose a specific disease against which the claimed compounds are useful, and therefore, absent undue experimentation, one of ordinary skill in the art was precluded from using the invention.

The second basis for the Board's rejection was that, even if the specification did allege a specific use, applicants failed to prove that the claimed compounds are useful.

The first subsidiary issue, whether the application adequately described particular diseases, calls for a judgment about what the various representations and discussions contained in the patent application's specification would say to a person of ordinary skill in the art. We have considered that question carefully, and, for the reasons we explained above in some detail, we conclude that the Board's judgment on this question was erroneous. Our conclusion rests on our understanding of what a person skilled in the art would gather from the various art cited, and from the statements in the application itself. We consider the Board's error to be sufficiently clear that it is reversible whether viewed as clear error or as resulting in an arbitrary and capricious decision. 44

The second subsidiary issue, whether human testing is a prerequisite to patentability, is a pure question of law: what does the practical utility requirement mean in a case of this kind. Under either our traditional standard or under the APA standard no deference is owed the Agency on a question of law, and none was accorded. 45

The Board erred in affirming the examiner's rejection under 35 U.S.C. Sec. 112 p 1. The decision is reversed. 47

== Kevin ==

In a decision dated March 19, 1993, the Board affirmed the examiner's final rejection. The three-page opinion, which lacked any additional analysis, relied entirely on the examiner's reasoning. Although noting that it also would have been proper for the examiner to reject the claims under 35 U.S.C. Sec. 101, the Board affirmed solely on the basis of the Examiner's Sec. 112 p 1 rejection. This appeal followed.

The requirement that an invention have utility is found in 35 U.S.C. Sec. 101: "Whoever invents ... any new and useful ... composition of matter ... may obtain a patent therefor...." (emphasis added). It is also implicit in Sec. 112 p 1, which reads: 13
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 14
Obviously, if a claimed invention does not have utility, the specification cannot enable one to use it. 15

The first basis for the Board's decision was that the applicants' specification failed to disclose a specific disease against which the claimed compounds are useful, and therefore, absent undue experimentation, one of ordinary skill in the art was precluded from using the invention. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.Cir.1986), cert. denied, 480 U.S. 947, 107 S.Ct. 1606, 94 L.Ed.2d 792 (1987). In support, the Commissioner argues that the disclosed uses in the '944 application, namely the "treatment of diseases" and "antitumor substances," are similar to the nebulous disclosure found insufficient in In re Kirk, 376 F.2d 936, 153 USPQ 48 (CCPA 1967). This argument is not without merit. 17

The second basis for the Board's rejection was that, even if the specification did allege a specific use, applicants failed to prove that the claimed compounds are useful. Citing various references,15 the Board found, and the Commissioner now argues, that the tests offered by the applicants to prove utility were inadequate to convince one of ordinary skill in the art that the claimed compounds are useful as antitumor agents.16
This court's predecessor has stated: 23
[A] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of Sec. 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. 24
In re Marzocchi, 439 F.2d 220, 223, 169 USPQ 367, 369 (CCPA 1971). From this it follows that the PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure. Id. at 224, 169 USPQ at 370. Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention's asserted utility. See In re Bundy, 642 F.2d 430, 433, 209 USPQ 48, 51 (CCPA 1981).17 25
The PTO has not met this initial burden. The references cited by the Board, Pazdur and Martin,18 do not question the usefulness of any compound as an antitumor agent or provide any other evidence to cause one of skill in the art to question the asserted utility of applicants' compounds. Rather, these references merely discuss the therapeutic predictive value of in vivo murine tests--relevant only if applicants must prove the ultimate value in humans of their asserted utility. Likewise, we do not find that the nature of applicants' invention alone would cause one of skill in the art to reasonably doubt the asserted usefulness. 26

We do not rest our decision there, however. Even if one skilled in the art would have reasonably questioned the asserted utility, i.e., even if the PTO met its initial burden thereby shifting the burden to the applicants to offer rebuttal evidence, applicants proffered sufficient evidence to convince one of skill in the art of the asserted utility. In particular, applicants provided through Dr. Kluge's declaration19 test results showing that several compounds within the scope of the claims exhibited significant antitumor activity against the L1210 standard tumor model in vivo. Such evidence alone should have been sufficient to satisfy applicants' burden. 29
The prior art further supports the conclusion that one skilled in the art would be convinced of the applicants' asserted utility.

FDA approval, however, is not a prerequisite for finding a compound useful within the meaning of the patent laws. Scott, 34 F.3d 1058, 1063, 32 USPQ2d 1115, 1120. Usefulness in patent law, and in particular in the context of pharmaceutical inventions, necessarily includes the expectation of further research and development. The stage at which an invention in this field becomes useful is well before it is ready to be administered to humans. Were we to require Phase II testing in order to prove utility, the associated costs would prevent many companies from obtaining patent protection on promising new inventions, thereby eliminating an incentive to pursue, through research and development, potential cures in many crucial areas such as the treatment of cancer. 37

The Commissioner takes this opportunity to raise the question of this court's standard of review when deciding cases on appeal from the PTO. Traditionally we have recited our standard of review to be, with regard to questions of law, that review is without deference to the views of the Agency, In re Donaldson, 16 F.3d 1189, 1192, 29 USPQ2d 1845, 1848 (Fed.Cir.1994) (in banc), In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985), and with regard to questions of fact, we defer to the Agency unless its findings are "clearly erroneous." See, e.g., In re Baxter Travenol Labs, 952 F.2d 388, 21 USPQ2d 1281 (Fed.Cir.1991); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir.1990); In re De Blauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir.1984). 39

A preliminary question, then, is whether this is one of those cases in which a difference in the standard of review would make a difference in the outcome. The ultimate issue is whether the Board correctly applied the Sec. 112 p 1 enablement mandate and its implicit requirement of practical utility, or perhaps more accurately the underlying requirement of Sec. 101, to the facts of this case. As we have explained, the issue breaks down into two subsidiary issues: (1) whether a person of ordinary skill in the art would conclude that the applicants had sufficiently described particular diseases addressed by the invention, and (2) whether the Patent Act supports a requirement that makes human testing a prerequisite to patentability under the circumstances of this case. 43
The first subsidiary issue, whether the application adequately described particular diseases, calls for a judgment about what the various representations and discussions contained in the patent application's specification would say to a person of ordinary skill in the art. We have considered that question carefully, and, for the reasons we explained above in some detail, we conclude that the Board's judgment on this question was erroneous. Our conclusion rests on our understanding of what a person skilled in the art would gather from the various art cited, and from the statements in the application itself. We consider the Board's error to be sufficiently clear that it is reversible whether viewed as clear error or as resulting in an arbitrary and capricious decision. 44
The second subsidiary issue, whether human testing is a prerequisite to patentability, is a pure question of law: what does the practical utility requirement mean in a case of this kind. Under either our traditional standard or under the APA standard no deference is owed the Agency on a question of law, and none was accorded. 45

If the question concerning the standard of review, raised by the Commissioner, is to be addressed meaningfully, it must arise in a case in which the decision will turn on that question, and, recognizing this, the parties fully brief the issue. This is not that case. We conclude that it is not necessary to the disposition of this case to address the question raised by the Commissioner; accordingly, we decline the invitation to do so.
III. CONCLUSION 46
The Board erred in affirming the examiner's rejection under 35 U.S.C. Sec. 112 p 1. The decision is reversed. 47

Talk:In Re Rouffet, 149 F.3d 1350 (1998)

2010-02-15T06:54:21Z

Kevin: /* Kevin */ new section

==Courtney==

Rouffet's application discloses technology to reduce the number of handovers between beams transmitted by the same satellite. In particular, Rouffet eliminates handovers caused solely by the satellite's motion. To accomplish this goal, Rouffet changes the shape of the beam transmitted by the satellite's antenna. Rouffet's satellites transmit fan-shaped beams.

The factual predicates underlying an obviousness determination include the scope and content of the prior art, the differences between the prior art and the claimed invention, and the level of ordinary skill in the art.

The Board, however, specifically found that artisans of ordinary skill in this field of art would know to shift the frame of reference from a ground station following a satellite to a satellite transmitting to the ground.

Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains.

To prevent the use of hindsight based on the invention to defeat patentability of the invention, this court requires the examiner to show a motivation to combine the references that create the case of obviousness. In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.

This court has identified three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art.

Because the Board did not explain the specific understanding or principle within the knowledge of a skilled artisan that would motivate one with no knowledge of Rouffet's invention to make the combination, this court infers that the examiner selected these references with the assistance of hindsight. This court forbids the use of hindsight in the selection of references that comprise the case of obviousness.

The Board's naked invocation of skill in the art to supply a suggestion to combine the references cited in this case is therefore clearly erroneous. Absent any proper motivation to combine part of Levine's teachings with Freeburg's satellite system, the rejection of Rouffet's claim over these references was improper and is reversed.

The Board reversibly erred in determining that there was a motivation to combine either the teachings of King, Rosen, and Ruddy or of Freeburg and Levine in a manner that would render the claimed invention obvious. Because this predicate was missing in each case, the Board did not properly show that these references render the claimed invention obvious. Therefore this court reverses the Board's decision upholding the rejection of Rouffet's claims. In light of this disposition, Rouffet's pending motion to remand the case to the Board for further consideration is denied as moot.

== Maura ==

The Board of Patent Appeals and Interferences (the Board) affirmed final rejection of the application as obvious under 35 U.S.C. § 103(a). See Ex parte Rouffet, No. 96- 1553 (Bd. Pat.App. & Int. Apr. 16, 1997). Because the Board reversibly erred in identifying a motivation to combine the references, this court reverses.

To reject claims in an application under section 103, an examiner must show an unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34 U.S.P.Q.2d 1210, 1214 (Fed.Cir.1995). In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d 1443, 1444 (Fed.Cir.1992). On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness. See id.
While this court reviews the Board's determination in light of the entire record, an applicant may specifically challenge an obviousness rejection by showing that the Board reached an incorrect conclusion of obviousness or that the Board based its obviousness determination on incorrect factual predicates.

The factual predicates underlying an obviousness determination include the scope and content of the prior art, the differences between the prior art and the claimed invention, and the level of ordinary skill in the art.
'A finding is clearly erroneous when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed.' " In re Graves, 69 F.3d 1147, 1151, 36 U.S.P.Q.2d 1697, 1700 (Fed.Cir.1995) (quoting United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 92 L.Ed. 746 (1948)).
This objective evidence of nonobviousness includes copying, long felt but unsolved need, failure of others, see Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), commercial success, see In re Huang, 100 F.3d 135, 139-40, 40 U.S.P.Q.2d 1685, 1689-90 (Fed.Cir.1996), unexpected results created by the claimed invention, unexpected properties of the claimed invention, see In re Mayne, 104 F.3d 1339, 1342, 41 U.S.P.Q.2d 1451, 1454 (Fed.Cir.1997); In re Woodruff, 919 F.2d 1575, 1578, 16 U.S.P.Q.2d 1934, 1936-37 (Fed.Cir.1990), licenses showing industry respect for the invention, see Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119 F.3d 953, 957, 43 U.S.P.Q.2d 1294, 1297 (Fed.Cir.1997); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 316, 227 U.S.P.Q. 766, 771 (Fed.Cir.1985), and skepticism of skilled artisans before the invention, see In re Dow Chem. Co., 837 F.2d 469, 473, 5 U.S.P.Q.2d 1529, 1532 (Fed.Cir.1988).

Therefore, "[w]hen determining the patentability of a claimed invention which combines two known elements, 'the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.

The Board provides no reasons that one of ordinary skill in this art, seeking to minimize handovers due to satellite motion, would combine Ruddy with Rosen and King in a manner that would render the claimed invention obvious.
Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains. See 35 U.S.C. § 103(a). This legal construct is akin to the "reasonable person" used as a reference in negligence determinations. The legal construct also presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan. See In re Carlson, 983 F.2d 1032, 1038, 25 U.S.P.Q.2d 1207, 1211 (Fed.Cir.1993).

("Most, if not all, inventions are combinations and mostly of old elements."). Therefore an examiner may often find every element of a claimed invention in the prior art. If identification of each claimed element in the prior art were sufficient to negate patentability, very few patents would ever issue. Furthermore, rejecting patents solely by finding prior art corollaries for the claimed elements would permit an examiner to use the claimed invention itself as a blueprint for piecing together elements in the prior art to defeat the patentability of the claimed invention. Such an approach would be "an illogical and inappropriate process by which to determine patentability." Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570, 38 U.S.P.Q.2d 1551, 1554 (Fed.Cir.1996).
To prevent the use of hindsight based on the invention to defeat patentability of the invention, this court requires the examiner to show a motivation to combine the references that create the case of obviousness. In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.
This court has identified three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. In this case, the Board relied upon none of these. Rather, just as it relied on the high level of skill in the art to overcome the differences between the claimed invention and the selected elements in the references, it relied upon the high level of skill in the art to provide the necessary motivation. The Board did not, however, explain what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination. Instead, the Board merely invoked the high level of skill in the field of art. If such a rote invocation could suffice to supply a motivation to combine, the more sophisticated scientific fields would rarely, if ever, experience a patentable technical advance. Instead, in complex scientific fields, the Board could routinely identify the prior art elements in an application, invoke the lofty level of skill, and rest its case for rejection. To counter this potential weakness in the obviousness construct, the suggestion to combine requirement stands as a critical safeguard against hindsight analysis and rote application of the legal test for obviousness.

As noted above, the suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner. See, e.g., Richdel, 714 F.2d at 1579; Environmental Designs, 713 F.2d at 698. Therefore, even when the level of skill in the art is high, the Board must identify specifically the principle, known to one of ordinary skill, that suggests the claimed combination. Cf. Gechter v. Davidson, 116 F.3d 1454, 43 U.S.P.Q.2d 1030 (Fed.Cir.1997) (explaining that the Board's opinion must describe the basis for its decision). In other words, the Board must explain the reasons one of ordinary skill in the art would have been motivated to select the references and to combine them to render the claimed invention obvious.

== Kevin ==

The examiner initially rejected Rouffet's claims as unpatentable over U.S. Pat. No. 5,199,672 (King) in view of U.S. Pat. No. 4,872,015 (Rosen) and a conference report entitled "A Novel Non-Geostationary Satellite Communications System," Conference Record, International Conference on Communications, 1981 (Ruddy). On appeal to the Board, the examiner added an alternative ground for rejection, holding that the claims were obvious over U.S. Pat. No. 5,394,561 (Freeburg) in view of U.S. Pat. No. 5,170,485 (Levine).

To reject claims in an application under section 103, an examiner must show an unrebutted prima facie case of obviousness. See In re Deuel, 51 F.3d 1552, 1557, 34 U.S.P.Q.2d 1210, 1214 (Fed.Cir.1995). In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. See In re Oetiker, 977 F.2d 1443, 1445, 24 U.S.P.Q.2d 1443, 1444 (Fed.Cir.1992). On appeal to the Board, an applicant can overcome a rejection by showing insufficient evidence of prima facie obviousness or by rebutting the prima facie case with evidence of secondary indicia of nonobviousness. See id.

When a rejection depends on a combination of prior art references, there must be some teaching, suggestion, or motivation to combine the references. See In re Geiger, 815 F.2d 686, 688, 2 U.S.P.Q.2d 1276, 1278 (Fed.Cir.1987). Although the suggestion to combine references may flow from the nature of the problem, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 U.S.P.Q.2d 1626, 1630 (Fed.Cir.1996), the suggestion more often comes from the teachings of the pertinent references, see In re Sernaker, 702 F.2d 989, 994, 217 U.S.P.Q. 1, 5 (Fed.Cir.1983), or from the ordinary knowledge of those skilled in the art that certain references are of special importance in a particular field, see Pro-Mold, 75 F.3d at 1573 (citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n. 24, 227 U.S.P.Q. 657, 667 n. 24 (Fed.Cir.1985)). Therefore, "[w]hen determining the patentability of a claimed invention which combines two known elements, 'the question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination.' " See In re Beattie, 974 F.2d 1309, 1311-12, 24 U.S.P.Q.2d 1040, 1042 (Fed.Cir.1992) (quoting Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 U.S.P.Q. 481, 488 (Fed.Cir.1984)).
III

The parties agree that the five references asserted by the examiner are in the same field of endeavor as the invention. The parties also agree that the pertinent level of skill in the art--design of satellite communications systems--is high. On appeal, Rouffet asserts that the examiner and the Board erred by improperly combining references to render the claimed invention obvious.
The Combination of King, Rosen, and Ruddy
The Board first affirmed the rejection of Rouffet's claims over a combination of King, Rosen, and Ruddy. King discloses a system for launching a plurality of satellites into low Earth orbits from a single launch vehicle. Rosen teaches a geostationary satellite that uses a plurality of fan beams with their long axes oriented in an east-west direction to communicate with mobile and fixed terminals on the Earth.

Obviousness is determined from the vantage point of a hypothetical person having ordinary skill in the art to which the patent pertains. See 35 U.S.C. § 103(a). This legal construct is akin to the "reasonable person" used as a reference in negligence determinations. The legal construct also presumes that all prior art references in the field of the invention are available to this hypothetical skilled artisan. See In re Carlson, 983 F.2d 1032, 1038, 25 U.S.P.Q.2d 1207, 1211 (Fed.Cir.1993).
As this court has stated, "virtually all [inventions] are combinations of old elements." Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 698, 218 U.S.P.Q. 865, 870 (Fed.Cir.1983); see also Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1579-80, 219 U.S.P.Q. 8, 12 (Fed.Cir.1983) ("Most, if not all, inventions are combinations and mostly of old elements."). Therefore an examiner may often find every element of a claimed invention in the prior art. If identification of each claimed element in the prior art were sufficient to negate patentability, very few patents would ever issue. Furthermore, rejecting patents solely by finding prior art corollaries for the claimed elements would permit an examiner to use the claimed invention itself as a blueprint for piecing together elements in the prior art to defeat the patentability of the claimed invention. Such an approach would be "an illogical and inappropriate process by which to determine patentability." Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570, 38 U.S.P.Q.2d 1551, 1554 (Fed.Cir.1996).
To prevent the use of hindsight based on the invention to defeat patentability of the invention, this court requires the examiner to show a motivation to combine the references that create the case of obviousness. In other words, the examiner must show reasons that the skilled artisan, confronted with the same problems as the inventor and with no knowledge of the claimed invention, would select the elements from the cited prior art references for combination in the manner claimed.
This court has identified three possible sources for a motivation to combine references: the nature of the problem to be solved, the teachings of the prior art, and the knowledge of persons of ordinary skill in the art. In this case, the Board relied upon none of these. Rather, just as it relied on the high level of skill in the art to overcome the differences between the claimed invention and the selected elements in the references, it relied upon the high level of skill in the art to provide the necessary motivation. The Board did not, however, explain what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination. Instead, the Board merely invoked the high level of skill in the field of art. If such a rote invocation could suffice to supply a motivation to combine, the more sophisticated scientific fields would rarely, if ever, experience a patentable technical advance. Instead, in complex scientific fields, the Board could routinely identify the prior art elements in an application, invoke the lofty level of skill, and rest its case for rejection. To counter this potential weakness in the obviousness construct, the suggestion to combine requirement stands as a critical safeguard against hindsight analysis and rote application of the legal test for obviousness.

As noted above, the suggestion to combine requirement is a safeguard against the use of hindsight combinations to negate patentability. While the skill level is a component of the inquiry for a suggestion to combine, a lofty level of skill alone does not suffice to supply a motivation to combine. Otherwise a high level of ordinary skill in an art field would almost always preclude patentable inventions. As this court has often noted, invention itself is the process of combining prior art in a nonobvious manner. See, e.g., Richdel, 714 F.2d at 1579; Environmental Designs, 713 F.2d at 698. Therefore, even when the level of skill in the art is high, the Board must identify specifically the principle, known to one of ordinary skill, that suggests the claimed combination.

Talk:Juicy Whip v. Orange Bang, 185 F.3d 1364 (1999)

2010-02-15T06:49:14Z

Kevin: /* Kevin */ new section

==Courtney==

The district court in this case held a patent invalid for lack of utility on the ground that the patented invention was designed to deceive customers by imitating another product and thereby increasing sales of a particular good. We reverse and remand.

Juicy Whip, Inc., is the assignee of United States Patent No. 5,575,405, which is entitled "Post-Mix Beverage Dispenser With an Associated Simulated Display of Beverage." A "post-mix" beverage dispenser stores beverage syrup concentrate and water in separate locations until the beverage is ready to be dispensed.

Juicy Whip sued defendants Orange Bang, Inc., and Unique Beverage Dispensers, Inc., (collectively, "Orange Bang") in the United States District Court for the Central District of California, alleging that they were infringing the claims of the '405 patent. Orange Bang moved for summary judgment of invalidity, and the district court granted Orange Bang's motion on the ground that the invention lacked utility and thus was unpatentable under 35 U.S.C. § 101.

The court concluded that the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product. The court explained that the purpose of the invention "is to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it is not." Although the court acknowledged Juicy Whip's argument that the invention provides an accurate representation of the dispensed beverage for the consumer's benefit while eliminating the need for retailers to clean their display bowls, the court concluded that those claimed reasons for the patent's utility "are not independent of its deceptive purpose, and are thus insufficient to raise a disputed factual issue to present to a jury."

The court further held that the invention lacked utility because it "improves the prior art only to the extent that it increases the salability of beverages dispensed from post-mix dispensers"; an invention lacks utility, the court stated, if it confers no benefit to the public other than the opportunity for making a product more salable. Finally, the court ruled that the invention lacked utility because it "is merely an imitation of the pre-mix dispenser," and thus does not constitute a new and useful machine.

Section 101 of the Patent Act of 1952, 35 U.S.C. § 101, provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," may obtain a patent on the invention or discovery. The threshold of utility is not high: An invention is "useful" under section 101 if it is capable of providing some identifiable benefit.

It is not at all unusual for a product to be designed to appear to viewers to be something it is not. For example, cubic zirconium is designed to simulate a diamond, imitation gold leaf is designed to imitate real gold leaf, synthetic fabrics are designed to simulate expensive natural fabrics, and imitation leather is designed to look like real leather.

The fact that customers may believe they are receiving fluid directly from the display tank does not deprive the invention of utility.

== Maura ==

The district court in this case held a patent invalid for lack of utility on the ground that the patented invention was designed to deceive customers by imitating another product and thereby increasing sales of a particular good. We reverse and remand.

The court concluded that the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product. The court explained that the purpose of the invention "is to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it is not."

The court further held that the invention lacked utility because it "improves the prior art only to the extent that it increases the salability of beverages dispensed from post-mix dispensers"; an invention lacks utility, the court stated, if it confers no benefit to the public other than the opportunity for making a product more salable. Finally, the court ruled that the invention lacked utility because it "is merely an imitation of the pre-mix dispenser," and thus does not constitute a new and useful machine.

Section 101 of the Patent Act of 1952, 35 U.S.C. § 101, provides that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," may obtain a patent on the invention or discovery. The threshold of utility is not high: An invention is "useful" under section 101 if it is capable of providing some identifiable benefit.

"To violate § 101 the claimed device must be totally incapable of achieving a useful result"

To be sure, since Justice Story's opinion in Lowell v. Lewis, 15 F. Cas. 1018 (C.C.D. Mass. 1817), it has been stated that inventions that are "injurious to the well-being, good policy, or sound morals of society" are unpatentable.... but the principle that inventions are invalid if they are principally designed to serve immoral or illegal purposes has not been applied broadly in recent years. For example, years ago courts invalidated patents on gambling devices on the ground that they were immoral, see e.g., Brewer v. Lichtenstein, 278 F. 512 (7th Cir. 1922); Schultze v. Holtz, 82 F. 448 (N.D. Cal. 1897); National Automatic Device Co. v. Lloyd, 40 F. 89 (N.D. Ill. 1889), but that is no longer the law, see In re Murphy, 200 USPQ 801 (PTO Bd. App. 1977).

The fact that one product can be altered to make it look like another is in itself a specific benefit sufficient to satisfy the statutory requirement of utility.
It is not at all unusual for a product to be designed to appear to viewers to be something it is not. For example, cubic zirconium is designed to simulate a diamond, imitation gold leaf is designed to imitate real gold leaf, synthetic fabrics are designed to simulate expensive natural fabrics, and imitation leather is designed to look like real leather. In each case, the invention of the product or process that makes such imitation possible has "utility" within the meaning of the patent statute, and indeed there are numerous patents directed toward making one product imitate another.

The requirement of "utility" in patent law is not a directive to the Patent and Trademark Office or the courts to serve as arbiters of deceptive trade practices. Other agencies, such as the Federal Trade Commission and the Food and Drug Administration, are assigned the task of protecting consumers from fraud and deception in the sale of food products.

Of course, Congress is free to declare particular types of inventions unpatentable for a variety of reasons, including deceptiveness. Cf. 42 U.S.C. § 2181(a) (exempting from patent protection inventions useful solely in connection with special nuclear material or atomic weapons). Until such time as Congress does so, however, we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public. The district court therefore erred in holding that the invention of the '405 patent lacks utility because it deceives the public through imitation in a manner that is designed to increase product sales.
REVERSED and REMANDED.

== Kevin ==

The district court in this case held a patent invalid for lack of utility on the ground that the patented invention was designed to deceive customers by imitating another product and thereby increasing sales of a particular good. We reverse and remand.

The court concluded that the invention lacked utility because its purpose was to increase sales by deception, i.e., through imitation of another product. The court explained that the purpose of the invention "is to create an illusion, whereby customers believe that the fluid contained in the bowl is the actual beverage that they are receiving, when of course it is not." Although the court acknowledged Juicy Whip's argument that the invention provides an accurate representation of the dispensed beverage for the consumer's benefit while eliminating the need for retailers to clean their display bowls, the court concluded that those claimed reasons for the patent's utility "are not independent of its deceptive purpose, and are thus insufficient to raise a disputed factual issue to present to a jury." The court further held that the invention lacked utility because it "improves the prior art only to the extent that it increases the salability of beverages dispensed from post-mix dispensers"; an invention lacks utility, the court stated, if it confers no benefit to the public other than the opportunity for making a product more salable. Finally, the court ruled that the invention lacked utility because it "is merely an imitation of the pre-mix dispenser," and thus does not constitute a new and useful machine.

It is not at all unusual for a product to be designed to appear to viewers to be something it is not. For example, cubic zirconium is designed to simulate a diamond, imitation gold leaf is designed to imitate real gold leaf, synthetic fabrics are designed to simulate expensive natural fabrics, and imitation leather is designed to look like real leather. In each case, the invention of the product or process that makes such imitation possible has "utility" within the meaning of the patent statute, and indeed there are numerous patents directed toward making one product imitate another. See, e.g., U.S. Pat. No. 5,762,968 (method for producing imitation grill marks on food without using heat); U.S. Pat. No. 5,899,038 (laminated flooring imitating wood); U.S. Pat. No. 5,571,545 (imitation hamburger). Much of the value of such products resides in the fact that they appear to be something they are not. Thus, in this case the claimed post-mix dispenser meets the statutory requirement of utility by embodying the features of a post-mix dispenser while imitating the visual appearance of a pre-mix dispenser

Of course, Congress is free to declare particular types of inventions unpatentable for a variety of reasons, including deceptiveness. Cf. 42 U.S.C. § 2181(a) (exempting from patent protection inventions useful solely in connection with special nuclear material or atomic weapons). Until such time as Congress does so, however, we find no basis in section 101 to hold that inventions can be ruled unpatentable for lack of utility simply because they have the capacity to fool some members of the public. The district court therefore erred in holding that the invention of the '405 patent lacks utility because it deceives the public through imitation in a manner that is designed to increase product sales.

Talk:Hybritech v. Monoclonal Antiboties, 802 F.2d 1375 (1986)

2010-02-15T06:46:10Z

Kevin: /* Kevin */ new section

==Courtney==

Scientists and clinicians have long employed the ability of antibodies to recognize and complex with antigens as a tool to identify or label particular cells or molecules and to separate them from a mixture. Their source of antibodies has been primarily the serum separated from the blood of a vertebrate immunized or exposed to the antigen.

Immunoassays, the subject matter of the '110 patent, are diagnostic methods for determining the presence or amount of antigen in body fluids such as blood or urine by employing the ability of an antibody to recognize and bind to an antigen. Generally, the extent to which the antibody binds to the antigen to be quantitated is an indication of the amount of antigen present in the fluid. Labelling the antibody or, in some cases, the antigen, with either a radioactive substance, I125, or an enzyme makes possible the detection of the antibody-antigen complex.

Hybritech sued Monoclonal March 2, 1984, for damages and an injunction alleging that the manufacture and sale of Monoclonal's diagnostic kits infringed the '110 patent.

The district court also invalidated the patent on various grounds based on 35 U.S.C. Sec. 112, first and second paragraphs, as hereinafter discussed.A.

B. The Claimed Subject Matter of the '110 Patent 50
Hybritech argues that the district court's determination that there is no credible evidence of conception or reduction to practice of the '110 invention before May 1980 is error because Dr. David's laboratory notebooks, Nos. 21 and 24, clearly show successful sandwich assays using monoclonal antibodies in August, September, and October of 1979. At the least, argues Hybritech, the invention was conceived in January of 1979, long before Drs. Ruoslahti, Engvall, and Uotila began work on a sandwich assay using monoclonal antibodies, and diligence was thereafter exercised until constructive reduction to practice occurred by the filing of the '110 patent application on August 4, 1980.

Under 35 U.S.C. Sec. 282, a patent is presumed valid, and the one attacking validity has the burden of proving invalidity by clear and convincing evidence.

Hybritech's claim of conception, generally, is evidenced by the sometimes sparsely documented work of a start-up company whose first small advances evolved into the myriad activities of a mature company with efforts directed toward developing the claimed invention by first employing the Kohler and Milstein technology to produce the necessary monoclonal antibodies and using those antibodies in diagnostic sandwich assay kits. There is no doubt that exploiting monoclonal antibodies for use in sandwich assays was one of the major objectives of Hybritech.

A section 103 obviousness determination--whether the claimed invention would have been (not "would be" as the court repeatedly stated because Monoclonal's pretrial papers used that improper language) obvious at the time the invention was made is reviewed free of the clearly erroneous standard although the underlying factual inquiries--scope and content of the prior art, level of ordinary skill in the art,3 and differences between the prior art and the claimed invention--integral parts of the subjective determination involved in Sec. 103, are reviewed under that standard.

Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely "icing on the cake," as the district court stated at trial.

The district court's finding that Kohler and Milstein developed a method for producing monoclonal antibodies in vitro is correct, but that finding proves no more; although it made possible all later work in that it paved the way for a supply of monoclonal antibodies, it indisputably does not suggest using monoclonal antibodies in a sandwich assay in accordance with the invention claimed in the '110 patent.

The trial court's finding that the "sudden availability of monoclonals" was the reason for the commercial success of Hybritech's diagnostic kits (Finding 11) is unsupported by the record and clearly erroneous. Monoclonal admits that monoclonal antibodies were available in the United States in 1978, and the evidence clearly reflects that. Thus, at least three years passed between the time monoclonal antibodies were available in adequate supply and the time Hybritech began selling its kits. Especially in the fast-moving biotechnology field, as the evidence shows, that is anything but sudden availability. 97

With respect to the objective indicia of nonobviousness, while there is evidence that marketing and financing played a role in the success of Hybritech's kits, as they do with any product, it is clear to us on the entire record that the commercial success here was due to the merits of the claimed invention. It cannot be argued on this record that Hybritech's success would have been as great and as prolonged as admittedly it has been if that success were not due to the merits of the invention. The evidence is that these kits compete successfully with numerous others for the trust of persons who have to make fast, accurate, and safe diagnoses. This is not the kind of merchandise that can be sold by advertising hyperbole.

"The specification ... shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. Sec. 112. Because not complying with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing, in order to find that the best mode requirement is not satisfied, it must be shown that the applicant knew of and concealed a better mode than he disclosed. DeGeorge v. Bernier, 768 F.2d 1318, 1324, 226 USPQ 758, 763 (Fed.Cir.1985) (quoting with approval In re Sherwood, 613 F.2d 809, 204 USPQ 537 (CCPA 1980)). The only evidence even colorably relating to concealment is testimony by various Hybritech employees that sophisticated, competent people perform the screening and that the screening process is labor-intensive and time-consuming. It is not plausible that this evidence amounts to proof of concealment of a best mode for screening or producing monoclonal antibodies for use in the claimed '110 process, and therefore we are of the firm conviction that the district court's finding that the best mode requirement was not satisfied is clearly erroneous.

The evidence of record indisputably shows that calculating affinity was known in the art at the time of filing, and notwithstanding the fact that those calculations are not precise, or "standard," the claims, read in light of the specification, reasonably apprise those skilled in the art and are as precise as the subject matter permits.

The record also shows that Blakemore, who testified extensively for Monoclonal that the claimed invention would have been obvious, never used monoclonal antibodies in sandwich assays at Bio-Rad before 1980.

It bears repeating that it is crucial that counsel set forth the law accurately. More particularly, it is the duty of counsel to impart to the judge that the obviousness question properly is whether the claimed invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, and that the district court must expressly make the three factual determinations required by Graham and consider objective evidence of obviousness before the legal conclusion of obviousness vel non is made. Submitting to the court language like "any differences ... would have been obvious," as was done here, violates the axiom that the question is not whether the differences would have been obvious but the claimed invention as a whole. Furthermore, arguing that "it would be obvious" rather than that it would have been obvious shifts the court's focus to the wrong period of time, namely to a time long after the invention was made, in which, more likely than not, the prior art and the level of ordinary skill in the art are more advanced. See 35 U.S.C. Sec. 103

== Maura==

Immunoassays, the subject matter of the '110 patent, are diagnostic methods for determining the presence or amount of antigen in body fluids such as blood or urine by employing the ability of an antibody to recognize and bind to an antigen.

The '110 patent, application for which was filed August 4, 1980, issued March 8, 1983, with claims defining a variety of sandwich assays using monoclonal antibodies.

The district court held that the claimed subject matter of the '110 patent was neither conceived nor actually reduced to practice before May 1980, and was anticipated under Sec. 102(g) by the actual reduction to practice of the invention by Drs. Uotila and Ruoslahti at the La Jolla Cancer Research Foundation (LJCRF) as early as November of 1979 and by the actual reduction to practice of the invention by Drs. Oi and Herzenberg (Oi/Herzenberg work) at the Stanford University Laboratory as early as July 1978, later published in December of 1979. 22
The district court also held the claims of the '110 patent invalid for obviousness from the Oi/Herzenberg work in view of (1) a February 1979 article by M.E. Frankel and W. Gerhard (Frankel article) which discloses high- affinity monoclonal antibodies, and apparently in view of numerous other references including; (2) the work of Nobel Prize winners G. Kohler and C. Milstein disclosing a Nobel Prize-worthy method for producing monoclonal antibodies in vitro (outside the body) published in an August 7, 1975...

Rule 52(a) "ensures care in the preparation of an opinion ... and provides appellate courts with the benefit of the District Court's insights into a case," Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 318, 227 USPQ 766, 772 (Fed.Cir.1985) (Harvey, Senior District Judge, concurring) by requiring a district court to "find the facts specially and state separately its conclusions of law thereon."

"A finding is clearly erroneous when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948). "This standard plainly does not entitle a reviewing court to reverse the finding of the trier of fact simply because it is convinced that it would have decided the case differently." Anderson, supra, 105 S.Ct. at 1511. In other words, "if the district court's account of the evidence is plausible in light of the record viewed in its entirety" or "where there are two permissible views of the evidence," the factfinder cannot be clearly erroneous.

Under 35 U.S.C. Sec. 282, a patent is presumed valid, and the one attacking validity has the burden of proving invalidity by clear and convincing evidence.

Section 102(g) states that a person shall be entitled to a patent unless "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." Section 102(g) "relates to prior inventorship by another in this country" and "retains the rules governing the determination of priority of invention...." Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444, 223 USPQ 603, 606 (Fed.Cir.1984) (quoting P.J. Federico, Commentary on the New Patent Act, 35 USCA page 1, at 19 (1954)). Section 102(g) says: "In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other." 59

Conception is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed.

We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that "there was no credible evidence of conception before May 1980" is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value.

Hybritech laboratory notebooks and the uncontradicted testimony of Dr. David and Mr. Greene show that development of the claimed invention proceeded diligently through the rest of 1979 and 1980, there being absolutely no evidence of record nor even argument by Monoclonal that Hybritech was not diligent in its efforts to reduce to practice the claimed invention during the period January 1979 to the '110 application filing date of August 4, 1980. We therefore hold as a matter of law that Hybritech's conception, which was before LJCRF conceived the claimed invention, coupled by diligence to its constructive reduction to practice by the filing of the '110 application, entitle Hybritech to priority over LJCRF. See 35 U.S.C. Sec. 102(g). The work of LJCRF is therefore not prior art. 72

A section 103 obviousness determination--whether the claimed invention would have been (not "would be" as the court repeatedly stated because Monoclonal's pretrial papers used that improper language) obvious at the time the invention was made is reviewed free of the clearly erroneous standard although the underlying factual inquiries--scope and content of the prior art, level of ordinary skill in the art,3 and differences between the prior art and the claimed invention--integral parts of the subjective determination involved in Sec. 103, are reviewed under that standard. Objective evidence such as commercial success, failure of others, long-felt need, and unexpected results must be considered before a conclusion on obviousness is reached and is not merely "icing on the cake," as the district court stated at trial. See Lindemann, supra, 730 F.2d at 1461, 221 USPQ at 488; Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed.Cir.1983); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 219 USPQ 856 (Fed.Cir.1983); W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303, 314 (Fed.Cir.1983). 78

Having considered the evidence of nonobviousness required by Sec. 103 and Graham, supra, we hold, as a matter of law, that the claimed subject matter of the '110 patent would not have been obvious to one of ordinary skill in the art at the time the invention was made and therefore reverse the court's judgment to the contrary. The large number of references, as a whole, relied upon by the district court to show obviousness, about twenty in number, skirt all around but do not as a whole suggest the claimed invention, which they must, to overcome the presumed validity, Lindemann, 730 F.2d at 1462, 221 USPQ at 488, as a whole.

"The specification ... shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. Sec. 112. Because not complying with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing, in order to find that the best mode requirement is not satisfied, it must be shown that the applicant knew of and concealed a better mode than he disclosed.

The judgment of the district court holding the patent in suit invalid is reversed in all respects, and the case is remanded for a determination of the issue of infringement which the court held was moot. 114
REVERSED AND REMANDED.

== Kevin ==

The district court also held the claims of the '110 patent invalid for obviousness from the Oi/Herzenberg work in view of (1) a February 1979 article by M.E. Frankel and W. Gerhard (Frankel article) which discloses high-affinity monoclonal antibodies, and apparently in view of numerous other references including; (2) the work of Nobel Prize winners G. Kohler and C. Milstein disclosing a Nobel Prize-worthy method for producing monoclonal antibodies in vitro (outside the body) published in an August 7, 1975, article; (3) U.S. Patent No. 4,244,940 issued to Jeong et al. disclosing a simultaneous polyclonal assay (Jeong), U.S. Patent No. 4,098,876 to Piasio et al. disclosing a reverse polyclonal sandwich assay (Piasio), U.S. Patent No. 4,016,143 to Schurrs et al. disclosing a forward polyclonal sandwich assay (Schurrs); (4) a July 1979 publication by A.C. Cuello et al. disclosing the use of monoclonal antibodies in competitive assays; and (5) eight articles dated between January 1979 and March 6, 1980, "predicting" that monoclonal antibodies would be used in future immunoassays.1 23
The district court also invalidated the patent on various grounds based on 35 U.S.C. Sec. 112, first and second paragraphs, as hereinafter discussed.A. The References 24

As the examiner was aware, Kohler and Milstein developed a technique not only for producing antibodies in vitro, independent of a living body, thus eliminating dependence on a particular animal, but for in vitro production of monoclonal antibodies by hybridomas, discussed in the Background section, supra. 28

The district court found that the examiner twice rejected all of the claims of the '110 patent based on Cuello alone or in combination with the Jeong, Piasio, and Schurr references which disclose various sandwich assays using polyclonal antibodies. The court also found that the examiner allowed the claims after they were amended to include the 108 affinity limitation and after Richard Bartholomew, a Hybritech employee, submitted an affidavit alleging the advantages of using monoclonal rather than polyclonal antibodies in sandwich assays. 46

The district court stated, again in Monoclonal's words, that "it is of the utmost importance" that the advantages of monoclonal antibodies were "predicted by a number of authorities," eight to be exact, not important enough to list here, after the Kohler and Milstein discovery and after monoclonal antibodies became available. 49

OPINION 53
I. Review Under Rule 52(a) Fed.R.Civ.P. 54
Rule 52(a) "ensures care in the preparation of an opinion ... and provides appellate courts with the benefit of the District Court's insights into a case," Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 318, 227 USPQ 766, 772 (Fed.Cir.1985) (Harvey, Senior District Judge, concurring) by requiring a district court to "find the facts specially and state separately its conclusions of law thereon." With the exception of the first eight paragraphs, the first half of the district court's opinion here is Monoclonal's pretrial brief and the last three pages of the opinion are Monoclonal's pretrial findings of fact and conclusions of law. The district court adopted the above documents virtually verbatim, with the exception of portions of each concerning inequitable conduct and noninfringement, apparently without inviting a response from Hybritech, resulting in a repetitious (as the district court admitted in the opinion), sometimes internally inconsistent, and hard to follow opinion that presents us with a difficult task in gleaning the basis for many of the conclusions. For some of the findings, submitted before trial, no supporting evidence was introduced at trial. 55
The Supreme Court, in Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 105 S.Ct. 1504, 84 L.Ed.2d 518 (1985), strongly criticized the practice of "verbatim adoption of findings of fact prepared by prevailing parties, particularly when those findings have taken the form of conclusory statements unsupported by citation to the record." Anderson, supra, 105 S.Ct. at 1511. This court also has cautioned against the adoption of findings, especially when proposed by a party before trial, as here, and stated that the likelihood of clear error in those findings increases in such a situation. Lindemann Maschinenfabrik v. American Hoist and Derrick, 730 F.2d 1452, 1457, 221 USPQ 481, 485 (Fed.Cir.1984). Notwithstanding our misgivings about whether the findings in this case, prepared before any evidence was introduced, satisfy the objectives of Rule 52(a)--a carefully prepared opinion providing the reviewing court with the benefit of the district court's reasoned insights into the case--those findings are the district court's and may be reversed only if clearly erroneous. See Anderson, supra, 105 S.Ct. at 1511; Lindemann, 730 F.2d at 1457, 221 USPQ at 485. 56
"A finding is clearly erroneous when, although there is evidence to support it, the reviewing court on the entire evidence is left with the definite and firm conviction that a mistake has been committed." United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 542, 92 L.Ed. 746 (1948). "This standard plainly does not entitle a reviewing court to reverse the finding of the trier of fact simply because it is convinced that it would have decided the case differently." Anderson, supra, 105 S.Ct. at 1511. In other words, "if the district court's account of the evidence is plausible in light of the record viewed in its entirety" or "where there are two permissible views of the evidence," the factfinder cannot be clearly erroneous. Anderson, supra, at 1511 (quoting United States v. Yellow Cab Co., 338 U.S. 338, 342, 70 S.Ct. 177, 179, 94 L.Ed. 150 (1949)). This is so, stated the Court in dictum, see Anderson, supra, 105 S.Ct. at 1516 (Blackmun, J., concurring), even when the district court's findings rest on physical or documentary evidence or inferences from other facts and not on credibility determinations. See also Rule 52(a) Fed.R.Civ.P. (as amended Aug. 1, 1985). If the latter are involved, "Rule 52 demands even greater deference to the trial court's findings" but a trial judge may not "insulate his findings from review by denominating them credibility determinations"; if documents or objective evidence contradict the witness's story, clear error may be found even in a finding purportedly based on a credibility determination. Anderson, supra, at 1512-13. We proceed in light of all these principles.
II. Presumption of Validity 57
Under 35 U.S.C. Sec. 282, a patent is presumed valid, and the one attacking validity has the burden of proving invalidity by clear and convincing evidence. See, e.g., American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360, 220 USPQ 763, 770 (Fed.Cir.1984). Notwithstanding that the introduction of prior art not before the examiner may facilitate the challenger's meeting the burden of proof on invalidity, the presumption remains intact and on the challenger throughout the litigation, and the clear and convincing standard does not change. See, e.g., Jervis B. Webb Co. v. Southern Systems, Inc., 742 F.2d 1388, 1392 & n. 4, 222 USPQ 943, 945 & n. 4 (Fed.Cir.1984). The only indication that the district court recognized the presumption of validity and its proper application was its statement that "[t]he key issue in this case is whether the defendant has overcome the presumption of nonobviousness." That statement, however, speaks only part of the truth; the presumption of validity goes to validity of the patent in relation to the patent statute as a whole, not just to nonobviousness under section 103.III. Prior Invention of Another, 35 U.S.C. Sec. 102(g) 58
Section 102(g) states that a person shall be entitled to a patent unless "before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it." Section 102(g) "relates to prior inventorship by another in this country" and "retains the rules governing the determination of priority of invention...." Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437, 1444, 223 USPQ 603, 606 (Fed.Cir.1984) (quoting P.J. Federico, Commentary on the New Patent Act, 35 USCA page 1, at 19 (1954)). Section 102(g) says: "In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other." 59

Conception is the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." 1 Robinson On Patents 532 (1890); Coleman v. Dines, 754 F.2d 353, 359, 224 USPQ 857, 862 (Fed.Cir.1985). Actual reduction to practice requires that the claimed invention work for its intended purpose, see, e.g., Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358, (Fed.Cir.1986), and, as has long been the law, constructive reduction to practice occurs when a patent application on the claimed invention is filed. Weil v. Fritz, 572 F.2d 856, 865 n. 16, 196 USPQ 600, 608 n. 16 (CCPA 1978) (citing with approval Automatic Weighing Machine Co. v. Pneumatic Scale Corp., 166 F. 288 (1st Cir.1909)). 61

We are left with the definite and firm conviction that a mistake has been committed because the district court's account of the evidence that "there was no credible evidence of conception before May 1980" is insupportable. There is such evidence. The laboratory notebooks, alone, are enough to show clear error in the findings that underlie the holding that the invention was not conceived before May 1980. That some of the notebooks were not witnessed until a few months to one year after their writing does not make them incredible or necessarily of little corroborative value. Admittedly, Hybritech was a young, growing company in 1979 that failed to have witnesses sign the inventors' notebooks contemporaneously with their writing. Under a reasoned analysis and evaluation of all pertinent evidence, however, we cannot ignore that Hybritech, within a reasonable time thereafter, prudently had researchers other than those who performed the particular experiments witness the notebooks in response to Tom Adams' advice. The notebooks clearly show facts underlying and contemporaneous with conception of the claimed invention and in conjunction with the testimony of Dr. David and Greene, and others, are altogether legally adequate documentary evidence, under the law pertaining to conception, of the formation in the minds of the inventors of a definite and permanent idea of the complete and operative invention as it was thereafter applied in practice. We thus are not moved by Monoclonal's argument that the findings of fact underlying conception are based on credibility determinations and are more sacrosanct than usual. See Anderson, supra, 105 S.Ct. at 1512-13.

We therefore hold as a matter of law that Hybritech's conception, which was before LJCRF conceived the claimed invention, coupled by diligence to its constructive reduction to practice by the filing of the '110 application, entitle Hybritech to priority over LJCRF. See 35 U.S.C. Sec. 102(g). The work of LJCRF is therefore not prior art. 72
We also note that there is inadequate factual basis for the district court's holding that LJCRF reduced the claimed invention to practice as early as November 1979 because the only evidence that corroborates the testimony of Ruoslahti, Uotila, and Engvall is the note from Ruoslahti to Uotila, see section A, 2, supra, which indisputably is not the claimed invention, and the one curve from one graph from only one page, 43D, of the six Uotila notebooks. After a reasoned examination, analysis, and evaluation of this pertinent evidence we conclude that it falls far short of showing the "formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice," see Coleman, 754 F.2d at 359, 224 USPQ at 862, and therefore is legally inadequate to support even a holding of conception of the claimed invention by LJCRF personnel in 1979. 73

It is axiomatic that for prior art to anticipate under Sec. 102 it has to meet every element of the claimed invention, and that such a determination is one of fact. See, e.g., Lindemann, supra, 730 F.2d at 1458, 221 USPQ at 485; Great Northern Corp. v. Davis Core & Pad Co., 782 F.2d 159, 165, 228 USPQ 356, 358 (Fed.Cir.1986). Section 102(g) upon which the district court relied is one type of "anticipation," i.e., prior invention by another of the same invention.

Although the district court did not provide its insights into why commercial success was due to business acumen and not to the merits of the claimed invention, Monoclonal urges in support that it was due to Hybritech's spending disproportionate sums on marketing, 25-30% of income. The undisputed evidence was that expenditures of mature companies in this field are between 17 and 32%. Furthermore, the record shows that advertising makes those in the industry--hospitals, doctors, and clinical laboratories--aware of the diagnostic kits but does not make these potential users buy them; the products have to work, and there is no evidence that that is not the case here or that the success was not due to the merits of the claimed sandwich assays--clearly contrary to the district court's finding. 96

The trial court's finding that the "sudden availability of monoclonals" was the reason for the commercial success of Hybritech's diagnostic kits (Finding 11) is unsupported by the record and clearly erroneous. Monoclonal admits that monoclonal antibodies were available in the United States in 1978, and the evidence clearly reflects that. Thus, at least three years passed between the time monoclonal antibodies were available in adequate supply and the time Hybritech began selling its kits. Especially in the fast-moving biotechnology field, as the evidence shows, that is anything but sudden availability. 97

Enablement is a legal determination of whether a patent enables one skilled in the art to make and use the claimed invention, Raytheon Co. v. Roper Corp., 724 F.2d 951, 960, 220 USPQ 592, 599 (Fed.Cir.1983), is not precluded even if some experimentation is necessary, although the amount of experimentation needed must not be unduly extensive, Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576, 224 USPQ 409, 413 (Fed.Cir.1984), and is determined as of the filing date of the patent application, which was August 4, 1980. See W.L. Gore and Associates v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.Cir.1983). Furthermore, a patent need not teach, and preferably omits, what is well known in the art. Lindemann, 730 F.2d at 1463, 221 USPQ at 489. 105

"The specification ... shall set forth the best mode contemplated by the inventor of carrying out his invention." 35 U.S.C. Sec. 112. Because not complying with the best mode requirement amounts to concealing the preferred mode contemplated by the applicant at the time of filing, in order to find that the best mode requirement is not satisfied, it must be shown that the applicant knew of and concealed a better mode than he disclosed.

The basis of the district court's holding that the claims are indefinite is that "they do not disclose how infringement may be avoided because antibody affinity cannot be estimated with any consistency." (Conclusion 6.) Even if the district court's finding in support of this holding--that "there is no standard set of experimental conditions which are used to estimate affinities"--is accurate, under the law pertaining to indefiniteness--"if the claims, read in light of the specification, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the courts can demand no more," Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.Cir.1985)--the claims clearly are definite.

The judgment of the district court holding the patent in suit invalid is reversed in all respects, and the case is remanded for a determination of the issue of infringement which the court held was moot. 114
REVERSED AND REMANDED. 1
With respect to obviousness, one portion of the district court's opinion apparently relies on all of the above listed references, (1)--(5), for the obviousness holding while a later portion entitled "CONCLUSIONS OF LAW" relies on only the Oi/Herzenberg and Frankel articles. Furthermore, the district court did not state that the LJCRF work was considered for purposes of Sec. 103, although we recognize that Sec. 102(g) prior art can be used for Sec. 103 2

It bears repeating that it is crucial that counsel set forth the law accurately. More particularly, it is the duty of counsel to impart to the judge that the obviousness question properly is whether the claimed invention as a whole would have been obvious to one of ordinary skill in the art at the time the invention was made, and that the district court must expressly make the three factual determinations required by Graham and consider objective evidence of obviousness before the legal conclusion of obviousness vel non is made. Submitting to the court language like "any differences ... would have been obvious," as was done here, violates the axiom that the question is not whether the differences would have been obvious but the claimed invention as a whole. Furthermore, arguing that "it would be obvious" rather than that it would have been obvious shifts the court's focus to the wrong period of time, namely to a time long after the invention was made, in which, more likely than not, the prior art and the level of ordinary skill in the art are more advanced. See 35 U.S.C. Sec. 103

Talk:Graham v. John Deere, 383 U.S. 1 (1966)

2010-02-08T12:39:08Z

Kevin: /* Kevin */ new section

==Courtney==
In No. 11, petitioners sued for infringement of a patent, consisting of a combination of old mechanical elements, for a device designed to absorb shock from plow shanks in rocky soil to prevent damage to the plow. In 1955, the Fifth Circuit held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way." Here, the Eighth Circuit held that, since there was no new result in the combination, the patent was invalid.

The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and utility, upon the "non-obvious" nature of the "subject matter sought to be patented" to a person having ordinary skill in the pertinent art.

The Prior Art

Five prior patents indicating the state of the art were cited by the Patent Office in the prosecution of the '798 application. Four of these patents, 10 other United States patents, and two prior-use spring-clamp arrangements not of record in the '798 file wrapper were relied upon by respondents as revealing the prior art. The District Court and the Court of Appeals found that the prior art "as a whole in one form or another contains all of the mechanical elements of the 798 Patent." One of the prior-use clamp devices not before the Patent Examiner -- Glencoe -- was found to have "all of the elements."

The substitution of a rib built into a collar likewise presents no patentable difference above the prior art. It was fully disclosed and dedicated to the public in the Livingstone patent. Cook Chemical argues, however, that Livingstone is not in the pertinent prior art, because it relates to liquid containers having pouring spouts, rather than pump sprayers. Apart from the fact that respondent made no such objection to similar references cited by the Examiner, [Footnote 18] so restricted a view of the applicable prior art is not justified. The problems confronting Scoggin and the insecticide industry were not insecticide problems, they were mechanical closure problems. Closure devices in such a closely related art as pouring spouts for liquid containers are, at the very least, pertinent references. See II Walker on Patents § 260 (Deller ed. 1937).

However, these factors do not, in the circumstances of this case, tip the scales of patentability. The Scoggin invention, as limited by the Patent Office and accepted by Scoggin, rests upon exceedingly small and quite nontechnical mechanical differences in a device which was old in the art. At the latest, those differences were rendered apparent in 1953 by the appearance of the Livingstone patent, and unsuccessful attempts to reach a solution to the problems confronting Scoggin made before that time became wholly irrelevant. It is also irrelevant that no one apparently chose to avail himself of knowledge stored in the Patent Office and readily available by the simple expedient of conducting a patent search -- a prudent and nowadays common preliminary to well organized research. Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485 (1900). To us, the limited claims of the Scoggin patent are clearly evident from the prior art as it stood at the time of the invention.

We conclude that the claims in issue in the Scoggin patent must fall as not meeting the test of § 103, since the differences between them and the pertinent prior art would have been obvious to a person reasonably skilled in that art.

The judgment of the Court of Appeals in No. 11 is affirmed. The judgment of the Court of Appeals in Nos. 37 and 43 is reversed, and the cases remanded to the District Court for disposition not inconsistent with this opinion.

== Maura ==

In 1955, the Fifth Circuit held the patent valid, ruling that a combination is patentable when it produces an "old result in a cheaper and otherwise more advantageous way." Here, the Eighth Circuit held that, since there was no new result in the combination, the patent was invalid.

Since our last expression on patent validity, Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U. S. 147 (1950), the Congress has, for the first time, expressly added a third statutory dimension to the two requirements of novelty and utility that had been the sole statutory test since the Patent Act of 1793. This is the test of obviousness, i.e., whether
"the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."
§ 103 of the Patent Act of 1952, 35 U.S.C. § 103 (1964 ed.).

In 1955, the Fifth Circuit had held the patent valid under its rule that, when a combination produces an "old result in a cheaper and otherwise more advantageous way," it is patentable. Jeoffroy Mfg., Inc. v. Graham, 219 F.2d 511, cert. denied, 350 U.S. 826. In 1964, the Eighth Circuit held, in the case at bar, that there was no new result in the patented combination, and that the patent was therefore not valid. 333 F.2d 529, reversing 216 F.Supp. 272. We granted certiorari, 379 U.S. 956. Although we have determined that neither Circuit applied the correct test, we conclude that the patent is invalid under § 103, and therefore we affirm the judgment of the Eighth Circuit.

"[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor."

"§ 103. Conditions for patentability; non-obvious subject matter"
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. "

The major distinction is that Congress has emphasized "nonobviousness" as the operative test of the section, rather than the less definite "invention" language of Hotchkiss that Congress thought had led to "a large variety" of expressions in decisions and writings. In the title itself, the Congress used the phrase "Conditions for patentability; non-obvious subject matter" (italics added), thus focusing upon "nonobviousness," rather than "invention." [Footnote 6] The Senate and House Reports, S.Rep. No. 1979, 82d Cong., 2d Sess. (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess. (1952), reflect this emphasis in these terms:
"Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of
Page 383 U. S. 15
the courts and in writings. Section 103 states this requirement in the title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented."

It is, of course, well settled that an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office. 52 U. S. 185-186 (1930); Schriber- Schroth Co. v. Cleveland Trust Co.,@ 311 U. S. 211, 311 U. S. 220-221 (1940).

"[A] change of material should not give title to a patent. As the making a ploughshare of cast, rather than of wrought, iron; a comb of iron, instead of horn or of ivory. . . ."
Ibid.
"[A] mere change of form should give no right to a patent, as a high-quartered shoe instead of a low one, a round hat instead of a three-square; or a square bucket instead of a round one."

== Kevin ==

This is the test of obviousness, i.e., whether
"the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

In 1955, the Fifth Circuit had held the patent valid under its rule that, when a combination produces an "old result in a cheaper and otherwise more advantageous way," it is patentable. Jeoffroy Mfg., Inc. v. Graham, 219 F.2d 511, cert. denied, 350 U.S. 826. In 1964, the Eighth Circuit held, in the case at bar, that there was no new result in the patented combination, and that the patent was therefore not valid. 333 F.2d 529, reversing 216 F.Supp. 272. We granted certiorari, 379 U.S. 956. Although we have determined that neither Circuit applied the correct test, we conclude that the patent is invalid under § 103, and therefore we affirm the judgment of the Eighth Circuit.

At the outset, it must be remembered that the federal patent power stems from a specific constitutional provision which authorizes the Congress "To promote the Progress of . . . useful Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries." Art. I, § 8, cl. 8. [Footnote 1] The clause is both a grant of power and a limitation. This qualified authority, unlike the power often exercised in the sixteenth and seventeenth centuries by the English Crown, is limited to the promotion of advances in the "useful arts." It was written against the backdrop of the practices -- eventually curtailed by the Statute of Monopolies -- of the Crown in granting monopolies to court favorites in goods or businesses which had long before been enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp. 30-35 (London, 1946).

"[U]nless more ingenuity and skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor."
At p. 52 U. S. 267.
Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and skill than that possessed by an ordinary mechanic acquainted with the business, merely distinguished between new and useful innovations that were capable of sustaining a patent and those that were not. The Hotchkiss test laid the cornerstone of the judicial evolution suggested by Jefferson and left to the courts by Congress. The language in the case, and in those which followed, gave birth to "invention" as a word of legal art signifying patentable inventions. Yet, as this Court has observed,
"[t]he truth is, the word ['invention'] cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty
Page 383 U. S. 12
or not."

as articulated and defined in § 101 and § 102, and nonobviousness, the new statutory formulation, as set out in § 103. The first two sections, which trace closely the 1874 codification, express the "new and useful" tests which have always existed in the statutory scheme and, for our purposes here, need no clarification. [Footnote 5] The pivotal
Page 383 U. S. 13
section around which the present controversy centers is § 103. It provides:
"§ 103. Conditions for patentability; non-obvious subject matter"
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. "
Page 383 U. S. 14

The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and utility, upon the "non-obvious" nature of the "subject matter sought to be patented" to a person having ordinary skill in the pertinent art.
The first sentence of this section is strongly reminiscent of the language in Hotchkiss. Both formulations place emphasis on the pertinent are existing at the time the invention was made, and both are implicitly tied to advances in that art.

"Section 103, for the first time in our statute, provides a condition which exists in the law and has existed for more than 100 years, but only by reason of decisions of the courts. An invention which has been made, and which is new in the sense that the same thing has not been made before, may still not be patentable if the difference between the new thing and what was known before is not considered sufficiently great to warrant a patent. That has been expressed in a large variety of ways in decisions of
Page 383 U. S. 15
the courts and in writings. Section 103 states this requirement in the title. It refers to the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102. If this difference is such that the subject matter as a whole would have been obvious at the time to a person skilled in the art, then the subject matter cannot be patented."

It concluded that
"the . . . [device] meets the exacting standard required for a combination of old elements to rise to the level of patentable invention by fulfilling the long-felt need with an economical, efficient, utilitarian apparatus which achieved novel results and immediate commercial success."

Talk:Philips Electric Co. v. Thermal Industries, Inc., 450 F.2d 1164 (1971)

2010-02-01T10:01:55Z

Kevin: /* Kevin */ new section

==Courtney==

The alleged novelty of the Mayers process, therefore, lies in its utilization, through rapid cooling, of the internal stresses which the prior art had tried to avoid by annealing. 7

Appellant's preliminary contentions on this appeal are: (A) the trial judge erred when he admitted into evidence the microfilm of the Lorenze foreign patent application as a prior "printed publication" within the meaning of 35 U.S.C. Sec. 102(a); and (B) the trial judge erred in concluding that the invention of the patent in suit would have been obvious to those skilled in the art in 1951 from a combination of the Lorenze foreign patent application and the German patent. 22

Section 102 of 35 U.S.C. provides: 23

A person shall be entitled to a patent unless-(a) the invention was * * described in a printed publication in this or a foreign country, before the invention thereof by the applicant. 24

The traditional process of "printing" is no longer the only process synonymous with "publication." The emphasis, therefore, should be public dissemination of the document, and its availability and accessibility to persons skilled in the subject matter or art. 27

The field is rapidly undergoing change and improvement. To restrict our interpretation of Section 102(a)'s "printed" publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live and the underlying rationale of Section 102. We hold, therefore, that the term "printed" as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming. Whether or not an individual microfilm is a "printed" publication within the meaning of the statute is a question of fact which ought to be determined by the application of criteria consonant with modern day methods of printing, duplicating and disseminating documents. 28

The trial court found that all of the individual elements of the Mayers process were contained in the prior art.

The question of obviousness is highly dependent upon the skill of the ordinary worker in the art. If the incremental knowledge added by the patent to the prior art is a result of the application of mere mechanical skill by one familiar with the art, then the standard of invention has not been met.

Although the appellant makes no allusions to it, we note an adverse consideration in the history of this patent at the patent office. Although the alleged invention was conceived as early as 1950, the ultimate patent was not issued until May 22, 1962, after a long and tortuous course in the patent office. It is another illustration of what Judge Learned Hand has referred to as the "ant like persistence of solicitors" which overcomes "the patience of examiners, and there is apparently always but one outcome." See Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y. 1924).

== Maura ==

For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills.

It seems to us that the rationale of I. C. E. Corp. v. Armco Steel is sound. It finds support in modern copymaking techniques and the widespread commercial, industrial and educational use of microfilm, as well as its use in our libraries and data storage banks. Since the decision in Tenney, there have been revolutionary developments in techniques for reproduction, printing and dissemination of documents and data. The traditional process of "printing" is no longer the only process synonymous with "publication." The emphasis, therefore, should be public dissemination of the document, and its availability and accessibility to persons skilled in the subject matter or art. 27
The field is rapidly undergoing change and improvement. To restrict our interpretation of Section 102(a)'s "printed" publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live and the underlying rationale of Section 102. We hold, therefore, that the term "printed" as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming. Whether or not an individual microfilm is a "printed" publication within the meaning of the statute is a question of fact which ought to bedetermined by the application of criteria consonant with modern day methods of printing, duplicating and disseminating documents. 28

To be a 'publication' under the statute, a document must, among other things, be accessible to the public. * * * The public, for purposes of the statute, constitutes that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.

Justice Clark, in the first major Supreme Court analysis of the 1952 Patent Act, stated in Graham: 38
While the ultimate question of patent validity is one of law, [Great] A. & P. Tea Co. v. Supermarket [Equipment] Corp., supra [340 U.S. 147], at 155 [71 S.Ct. 127, 95 L.Ed. 162], the Sec. 103 condition, * * * lends itself to several basic factual inquiries. Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. 39

35 U.S.C. Sec. 102(a) 7
"[T]he term 'printed publication' as contemplated by Congress in 35 U.S.C. 102 can include a document printed, reproduced or duplicated by modern day methods, including microfilming, upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation." 250 F.Supp. at 743 8

== Kevin ==

This is an appeal from a judgment of the District Court of New Jersey in a patent infringement proceeding brought by Philips Electronic and Pharmaceutical Industries Corp. (PEPI) plaintiff-appellant against defendants, Glasseal Products, Inc. and Thermal and Electronics Industries, Inc. (T & E).1 Plaintiff charged the defendants with infringement of PEPI's United States Patent No. 3,035,372 entitled "Method for Making A Glass to Metal Seal" (Mayers Patent). He sought a preliminary and final injunction against further infringement as well as compensation for damages. The defendant-appellee, T & E, denied infringement and offered evidence to show that the Mayers patent was invalid because the teachings it contained had been anticipated by the prior art, or were obvious to one skilled in the art. The cases against Glasseal2 and T & E were consolidated, and tried. In his opinion, the trial judge held that patent no. 3,035,372 was invalid because of "obviousness" under 35 U.S.C. Sec. 103. 311 F.Supp. 17 (D.N.J.1970). PEPI has appealed from this judgment.

In finding the Mayers patent invalid because of "obviousness," the trial court made an extensive analysis of the state of the art in the glass seal making industry prior to the alleged Mayers invention. T & E introduced evidence of four processes antedating the Mayers patent which, it asserted, either showed the Mayers process to be in prior use or anticipated in such a way as to make it invalid for "obviousness." Two of these processes, the Fuscite and RCA processes, were found by the trial court to be insufficient to meet the heavy burden of proof necessary to establishing prior use.4 It is necessary to briefly discuss the other two of these processes in order to adequately deal with the questions raised on this appeal.

II. THE PRIOR ART 9
A. The German Patent. 10
On March 11, 1937, the German Patent Office issued patent no. 734,115. The German patent disclosed a three component type of compression seal, utilizing materials falling within the coefficient thermal expansion (CTE) range of the Mayers patent. 11
The trial judge found that the German patent anticipated appellant's claims with respect to the compressive stresses caused by mismatching CTE's. But, in the court's opinion, it did not anticipate the creation of tensile stresses within the glass member caused by rapid cooling. For this reason, the trial court concluded that, standing alone, the German patent did not anticipate the Mayers patent.
B. The Lorenze Patent Application.5 12
The Lorenze patent application, dated November 3, 1941, was introduced by the appellee as an invention "described in a printed publication in this or a foreign country."6 The first claim of the Lorenze application states: 13
(1) [M]ethod of producing gas-tight metal-to-glass seals which are insensitive to temperature and in which compressive stresses are produced in the glass, characterized by the fact that the metal surrounds the glass and the mass of glass is rapidly cooled, immediately after completion of the melting process, by additional coolants from a temperature which lies above the transformation point. 14

For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. Cummins Engine Co. v. General Motors Corp., 299 F.Supp. 59, 91 (D.Md.1969). Using this test, the trial court found that while the application clearly indicated a rapid cooling procedure in the making of seals, it did not provide diagrams, discuss the specific materials to be used or the exact nature of the seals. Nor was there an explanation of the importance of the selection of CTE in order to obtain the proper compressive stresses. For these reasons, the trial court concluded that the Lorenze application did not, standing alone, anticipate the Mayers patent. 15
For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. Cummins Engine Co. v. General Motors Corp., 299 F.Supp. 59, 91 (D.Md.1969). Using this test, the trial court found that while the application clearly indicated a rapid cooling procedure in the making of seals, it did not provide diagrams, discuss the specific materials to be used or the exact nature of the seals. Nor was there an explanation of the importance of the selection of CTE in order to obtain the proper compressive stresses. For these reasons, the trial court concluded that the Lorenze application did not, standing alone, anticipate the Mayers patent. 15

In summary, the prior art reveals knowledge of three component glass-to-metal compression seals with the same CTE's as Mayers [sic] process in one reference and rapid cooling of gas tight metal-to-glass compressive seals in a separate reference. The prior art reveals all of the important elements of Mayers [sic] process. 17
18
* *
19
The two references viewed together would seem to suggest a combination of the German compression elements with the Lorenze rapid cooling process to produce a glass-to-metal seal. Accepting this reasoning, the Mayers patent would be invalid under 35 U.S.C. Sec. 103. 20

Appellant's preliminary contentions on this appeal are: (A) the trial judge erred when he admitted into evidence the microfilm of the Lorenze foreign patent application as a prior "printed publication" within the meaning of 35 U.S.C. Sec. 102(a); and (B) the trial judge erred in concluding that the invention of the patent in suit would have been obvious to those skilled in the art in 1951 from a combination of the Lorenze foreign patent application and the German patent. 22
A. The Admission of the Lorenze Microfilm.

A person shall be entitled to a patent unless-(a) the invention was * * described in a printed publication in this or a foreign country, before the invention thereof by the applicant. 24
Whether or not a microfilm qualifies as a "printed publication" is not a new legal issue. In Application of Tenney, 254 F.2d 619, 45 CCPA 894 (1958), the court found that the microfilm in question, also a German patent application, did not constitute a "printed publication." After a long treatment of the history of the "printed" publication requirement, Tenney found the essence of the requirement to be the "probability" of public knowledge-not its actuality-once it has been established that the item has been both printed and published. Without proof of something more, it held that the mere existence of a microfilm copy did not alone create any presumption of public knowledge so as to constitute it a "printed publication" within the contemplation of Section 102(b). It also attached significance to the fact that the single extant microfilm copy had been misindexed. The concurring opinions, however, give considerable illumination to the majority decision because they disclose that under certain circumstances a microfilm can be held to be a printed document within the statutory meaning. Judge Worley believed that other factors were entitled to consideration, including not only the physical process utilized in the production or reproduction, "but also availability, accessibility, dissemination and, perhaps in some cases, even intent." 254 F.2d at 627. Judge Rich's concurrence, written in a similar vein cautioned that "no rigid rule about microfilm should be deduced, however, from our decision." 254 F.2d at 629. 25

Thus, a proponent of a microfilm as a "printed publication" under the statute should produce sufficient proof of its dissemination or that it has otherwise been made available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents. He should be able to make a satisfactory showing that a person interested in and ordinarily skilled in the art can locate it, and understand the essentials of the claimed invention without further research or experimentation. I. C. E. Corp. v. Armco, supra, 250 F.Supp. at 743. 31

On the basis of the foregoing, the trial court found that the Lorenze application, as microfilmed and indexed, was available and accessible, with the exercise of reasonable diligence, to persons ordinarily skilled in the art. It held the document to be a printed publication under the statute, constituting a part of the prior art in the field. 33

This evidence is sufficient to support a finding that the information contained in the microfilm had been disseminated, and was available and accessible to a person interested and ordinarily skilled in the art.10 Although the patent was indexed under the subheading "Minerals and Mineral Products," the trial judge noted that all of the other patent applications listed on the same index page pertained to devices or processes involving glass or glass metal combinations. His conclusion that the microfilm copy of the Lorenze application was not misfiled supports his finding that it was available to persons interested and could be located by persons ordinarily skilled in the subject matter with the exercise of reasonable diligence. 35
Upon the basis of the record before us, we are unable to state that the finding of the trial court that the Lorenze application was a printed publication within the meaning of Section 102(a) is "clearly erroneous"

The trial court, based on an analysis of the prior art in the glass seal making industry, concluded that the Mayers patent failed to meet the nonobviousness criteria of Section 103.11 Appellant contends that this finding was erroneous because: first, the Mayers process was not obvious to those skilled in the art in 1951; and secondly, the trial court failed to consider important secondary considerations which have been suggested as relevant inquiries in determining obviousness. Graham v. John Deere Co., 383 U.S. 1, at 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). 37

Assuming arguendo that this technique does maximize the stress, this distinction between Lorenze's "rapid cooling" and Mayers' is addressed only to the amount of stress induced. The critical question, however, in determining the validity of the Mayers patent is not the amount of any tensile stress that is induced but whether the technique of inducing any tensile strength was taught by the prior art. 44

(b) The Difference between the Prior Art and Mayers Patent 45
The trial court found that all of the individual elements of the Mayers process were contained in the prior art. It correctly concluded that this fact, in itself, did not invalidate the Mayers patent unless the combination of these elements would have been obvious to the ordinary skilled worker in the art. See United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966). 46
(c) Level of Skill in the Art 47

The question of obviousness is highly dependent upon the skill of the ordinary worker in the art. If the incremental knowledge added by the patent to the prior art is a result of the application of mere mechanical skill by one familiar with the art, then the standard of invention has not been met. The Supreme Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood,12 holding: 48
[U]nless more ingenuity and skill * * * were required * * * than were possessed by ordinary mechanic, acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor. 49

he trial court having made the factual inquiries prescribed by Graham, then turned to the final question of obviousness and concluded that the combination of the three component mismatched CTE elements of the German Patent with the rapid cooling procedure of the Lorenze application would have been obvious to a person having ordinary skill in the art.13 The findings of fact made by the district court and the conclusion that the Mayers process would have been obvious to one skilled in the art are supported by the evidence. In reaching this determination, we "give considerable weight to its [district court's] factual determinations underlying the decision of obviousness even though that issue is one of law which we shall rule ourselves. * * * Findings of fact in patent cases are not to be set aside unless clearly erroneous under Federal Rule of Civil Procedure 52(a)." Ralston Purina Co. v. General Foods Corp., 442 F.2d 389, at 391 (8th Cir. 1971). 52

Appellant points enthusiastically to the commercial success Mayers-type compression glass-to-metal seals have enjoyed with the use of the patented method, their importance to the electronics industry, national defense and the space effort. Courts have given measured weight to "commercial success" as a secondary consideration in an effort to determine the absence of obviousness. Frank W. Egan & Co. v. Modern Plastic Machinery Corp., 387 F.2d 319 (3rd Cir. 1967). 55

PEPI also asserts that there had been a long felt but unfilled need in the industry for stronger seals. In support of this contention PEPI cites a list of patents granted in the art prior to the Mayers application. This list allegedly shows the number of unsuccessful attempts to produce a stronger seal. The evidence adduced at trial, however, indicates that the industry was a developing one and that the skill in the art was producing increasingly better seals. By the time Mayers process was developed, the record indicates that stronger seals were being produced by several other methods, i. e., the RCA and Fuscite processes. This evidence, although not sufficient to prove a prior use, indicates an advanced state of the art wherein stronger seals were being produced to meet the demand. 58
There is no substance to the appellant's argument of commercial acquiescence in the patent: that is, a widespread adoption by the industry after introduction of the patented solution. Appellant emphasizes that eleven manufacturers of glass to metal seals have accepted licenses under the patent to date. But it is quite possible that these licensees found acquiescence less burdensome and costly than the expense and problems involved in patent litigation. See Preuss v. General Electric Co., 392 F.2d 29 (2nd Cir. 1968). The breakdown of royalties earned from each licensee up to and including the first quarter of 1968 aggregates less than $200,000.00.16 There do not appear to be any major companies in this group. RCA is not included. Infringement suits have not been commenced against General Electric Company, Texas Instruments or IT&T. 59
Although the appellant makes no allusions to it, we note an adverse consideration in the history of this patent at the patent office. Although the alleged invention was conceived as early as 1950, the ultimate patent was not issued until May 22, 1962, after a long and tortuous course in the patent office. It is another illustration of what Judge Learned Hand has referred to as the "ant like persistence of solicitors" which overcomes "the patience of examiners, and there is apparently always but one outcome." See Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y. 1924).

Finally, the appellant contends proper consideration was not given to the finding of the Massachusetts district court (Philips Electronic & Pharm. Industries Corp. v. Thermal Electronic Prod., 256 F.Supp. 705 (D.Mass.1966)) which upheld the validity of the Mayers patent or to the finding of the patent office which issued the patent in the first instance. It argues that reversible error was committed in holding that the presumption of validity stemming from the patent office had been overcome and in refusing to follow the Massachusetts case. The trial court concluded that since neither the German patent per se nor the Lorenze patent per se was before the patent office or the Massachusetts court, the presumption had been overcome. The appellant contends, however that in substance the same art was before the patent office and the Massachusetts court. 61
Where relevant prior art is not considered by the patent office, the presumption of validity of the patent is weakened or overcome. Ralston Purina Co. v. General Foods Corp. 442 F.2d 389 (8th Cir. 1971); Dole Refrigerating Co. v. Amerio Contact Plate Freezers, 265 F.2d 627 (3rd Cir. 1959). An analysis of this record reveals that in substance the same art was not before the patent office or the Massachusetts court. 62

In holding a thesis written by a patentee and filed in a college library available to students and to other libraries having exchange arrangement with the college to be in the "prior art," the court in Hamilton Laboratories v. Massengill, 111 F.2d 584, at 585 (6th Cir. 1940) found that the thesis constituted a publication within the terms of the statute 11
"A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made." 35 U.S.C. Sec. 103 12
Section 103, added to the Patent Code in 1952, as an additional test of patent validity, "was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional direction that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability." Graham v. John Deere Co., 383 U.S., at 17, 86 S.Ct. at 693 13

Talk:In re Hall, 781 F.2d 897 (1986)

2010-02-01T09:45:11Z

Kevin: /* Kevin */ new section

==Courtney==

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a "printed publication" bar under 35 U.S.C. Secs. 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

The record indicates that in September 1977, Foldi submitted his dissertation to the Department of Chemistry and Pharmacy at Freiburg University in the Federal Republic of Germany, and that Foldi was awarded a doctorate degree on November 2, 1977. 3

The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15

A person shall be entitled to a patent unless-- 16

* * *

17

* * *

18

(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20

Based on what we have already said concerning "public accessibility," and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence. 26

We agree with the board that the evidence of record consisting of Dr. Will's affidavits establishes a prima facie case for unpatentability of the claims under the Sec. 102(b) publication bar. It is a case which stands unrebutted. 27

== Maura ==

The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication.

The board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said: 12
We rely on the librarian's affidavit of express facts regarding the specific dissertation of interest and his description of the routine treatment of dissertations in general, in the ordinary course of business in his library. 13
On appeal, appellant raises two arguments: (1) the Sec. 102(b) "printed publication" bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.

The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15 A person shall be entitled to a patent unless-- 16
17
18
**
**
(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19

The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20
The statutory phrase "printed publication" has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, "public accessibility" has been called the touchstone in determining whether a reference constitutes a "printed publication" bar under 35 U.S.C. Sec. 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The Sec. 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis.

Based on what we have already said concerning "public accessibility," and noting that the determination rests on the facts of each case, we reject appellant's legal argument that a single cataloged thesis in one university library does not constitute sufficient accessibility to those interested in the art exercising reasonable diligence. 26

== Kevin ==

This is an appeal from the decision of the U.S. Patent and Trademark Office's (PTO) former Board of Appeals, adhered to on reconsideration by the Board of Patent Appeals and Interferences (board), sustaining the final rejection of claims 1-25 of reissue Application No. 343,922, filed January 29, 1982, based principally on a "printed publication" bar under 35 U.S.C. Secs. 102(b). The reference is a doctoral thesis. Because appellant concedes that his claims are unpatentable if the thesis is available as a "printed publication" more than one year prior to the application's effective filing date of February 27, 1979, the only issue is whether the thesis is available as such a printed publication. On the record before us, we affirm the board's decision.

The board held that the unrebutted evidence of record was sufficient to conclude that the Foldi dissertation had an effective date as prior art more than one year prior to the filing date of the appellant's initial application. In rejecting appellant's argument that the evidence was not sufficient to establish a specific date when the dissertation became publicly available, the board said: 12

On appeal, appellant raises two arguments: (1) the Sec. 102(b) "printed publication" bar requires that the publication be accessible to the interested public, but there is no evidence that the dissertation was properly indexed in the library catalog prior to the critical date; and (2) even if the Foldi thesis were cataloged prior to the critical date, the presence of a single cataloged thesis in one university library does not constitute sufficient accessibility of the publication's teachings to those interested in the art exercising reasonable diligence.
The "printed publication" bar is found in 35 U.S.C. Sec. 102: 15
A person shall be entitled to a patent unless-- 16
* *
17
* *
18
(b) the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States.... 19
The bar is grounded on the principle that once an invention is in the public domain, it is no longer patentable by anyone. In re Bayer, 568 F.2d 1357, 1361, 196 USPQ 670, 675 (CCPA 1978). 20
The statutory phrase "printed publication" has been interpreted to give effect to ongoing advances in the technologies of data storage, retrieval, and dissemination. In re Wyer, 655 F.2d 221, 226, 210 USPQ 790, 794 (CCPA 1981). Because there are many ways in which a reference may be disseminated to the interested public, "public accessibility" has been called the touchstone in determining whether a reference constitutes a "printed publication" bar under 35 U.S.C. Sec. 102(b). See, e.g., In re Bayer, 568 F.2d at 1359, 196 USPQ at 673; In re Wyer, 655 F.2d at 224, 210 USPQ at 792. The Sec. 102 publication bar is a legal determination based on underlying fact issues, and therefore must be approached on a case-by-case basis. See id. at 227, 210 USPQ at 795. The proponent of the publication bar must show that prior to the critical date the reference was sufficiently accessible, at least to the public interested in the art, so that such a one by examining the reference could make the claimed invention without further research or experimentation. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621 (Fed.Cir.1985); In re Bayer, 568 F.2d at 1361, 196 USPQ at 674; In re Wyer, 655 F.2d at 226-27, 210 USPQ at 794-95. 21

The evidence showed that cataloging and shelving thesis copies routinely took many months from the time they were first received from the faculty and that during the interim the theses were accumulated in a private library office accessible only to library employees. In particular, processing of Bayer's thesis was shown to have been completed after the critical date. 23
On those facts the CCPA held that Bayer's thesis was not sufficiently accessible and could not give rise to the Sec. 102(b) publication bar. But the court did not hold, as appellant would have it, that accessibility can only be shown by evidence establishing a specific date of cataloging and shelving before the critical date. While such evidence would be desirable, in lending greater certainty to the accessibility determination, the realities of routine business practice counsel against requiring such evidence. The probative value of routine business practice to show the performance of a specific act has long been recognized. See, e.g., 1 Wigmore, Evidence Sec. 92 (1940); rule 406, Fed.R.Evid.; 2 Weinstein, Evidence Secs. 406, 406 (1981). Therefore, we conclude that competent evidence of the general library practice may be relied upon to establish an approximate time when a thesis became accessible. 24

Talk:Reiner v. I. Leon Co., 285 F.2d 501 (1960)

2010-01-29T11:40:34Z

Kevin: /* Kevin */ new section

== Courtney ==
The original application was filed on July 24, 1946 and a patent was issued on January 18, 1949. An application for reissue was filed on July 12, 1949, on which the reissued patent in suit was granted on November 1, 1949. Before the date of the original application a number of patents for hair curlers had issued, and it is against the background of these that we must appraise the invention in suit.

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35). That has been the statutory definition since January 1, 1953.

The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant? In the case at bar the answers to these questions all favor the conclusion that it demanded more intuition than was possessed by the "ordinary" workers in the field. The needs were known, but the purpose to fulfil them with that minimum of material and labor disclosed in the patent had not appeared; and economy of production is as valid a basis for invention as foresight in the disclosure of new means. In the case at bar the saving of material as compared to anything that had preceded, was very great indeed; the existing devices at once yielded to Reiner's disclosure; his was an answer to the "long-felt want." 8

== Maura ==

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35).

It is not for us to decide what "discoveries" shall "promote the progress of science and the useful arts" sufficiently to grant any "exclusive right" of inventors (U. S. Constitution, Article 1, § 8). Nor may we approach the interpretation of § 103 of the Title 35 with a predetermined bias. 7

The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant?

A claim must of course read upon the specifications, but the specifications, unless so declared, are only an example of what the claim is intended to cover; it is a species of a broader genus, else no claims would cover anything not literally described in the specifications.

== Kevin ==

Before the date of the original application a number of patents for hair curlers had issued, and it is against the background of these that we must appraise the invention in suit.
. On August 1, 1944, Leon filed an application for a design patent for a curl clip. 5

Thus, between the appearance of Goodman and application for the original patent in suit an interval had elapsed of thirteen years, the art had disclosed seven "clamps" for hair curlers; and the answer to the need for such a device had obviously been the subject of much experiment. How far any of these succeeded the record does not show; but it is apparent that the patent in suit has been widely accepted.ow far any of these succeeded the record does not show; but it is apparent that the patent in suit has been widely accepted. Reiner, one of the inventors, had been in a war industry, and had had no experience in women's dress or adornment. Braga, his associate, was, so far as appears, equally unfamiliar with the subject matter.

We are of course acutely aware of the constant reminders in the books that the sale of a patented device is not alone a measure of its invention, and we accept that conclusion. Nevertheless, great commercial success, when properly scrutinized, may be a telling circumstance. It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a "combination": that is to say, it consists of former elements in a new assemblage. All the constituents may be old, if their new concourse would not "have been obvious at the time the invention was made to a person having ordinary skill in the art" (§ 103, Title 35). That has been the statutory definition since January 1, 1953.
It is not for us to decide what "discoveries" shall "promote the progress of science and the useful arts" sufficiently to grant any "exclusive right" of inventors (U. S. Constitution, Article 1, § 8). Nor may we approach the interpretation of § 103 of the Title 35 with a predetermined bias. 7

The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person "having ordinary skill" in an "art" with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, "obvious" is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means; how immediately was the invention recognized as an answer by those who used the new variant? In the case at bar the answers to these questions all favor the conclusion that it demanded more intuition than was possessed by the "ordinary" workers in the field. The needs were known, but the purpose to fulfil them with that minimum of material and labor disclosed in the patent had not appeared; and economy of production is as valid a basis for invention as foresight in the disclosure of new means. In the case at bar the saving of material as compared to anything that had preceded, was very great indeed; the existing devices at once yielded to Reiner's disclosure; his was an answer to the "long-felt want." 8

Talk:Hotchkiss v. Greenwood, 52 U.S. 11 (1850)

2010-01-29T11:34:58Z

Kevin: /* Kevin */ new section

== Courtney ==

A patent granted for a "new and useful improvement in making door and other knobs of all kinds of clay used in pottery, and of porcelain" by having the "cavity in which the screw or shank is inserted by which they are fastened largest at the bottom of its depth, in form of a dovetail, and a screw formed therein by pouring in metal in a fused state" was invalid.

The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.

In October, 1845, the plaintiffs in error brought an action in the Circuit Court of the United States for Ohio, against the defendants, for a violation of the patent right.

The following bill of exceptions was taken during the trial:

"The plaintiffs offered in evidence the patent specifications and drawings, and other evidence, tending to prove the originality, novelty, and usefulness of the inventions as described in said specification; and other evidence, tending to show the violation of said patent by the defendant, and rested. Whereupon the defendants offered evidence tending to show that the said alleged invention was not originally invented by anyone of the said patentees; and that if said invention was original with any of the said patentees, it was not the joint invention of all of said patentees; and other evidence, tending to show that the mode of fastening the shank or collet to the knob, adopted by the plaintiffs, and in said specification described, had been known and used in Middletown, Connecticut, prior to the alleged inventions of the plaintiffs, as a mode of fastening shanks or collets to metallic knobs. And the evidence being closed, the counsel for the plaintiffs insisted in the argument, that, although the knob, in the form in which it is patented, may have been known and used in the United States prior to their invention and patent; and although the shank and spindle, by which it is attached, may have been known and used in the United States prior to said invention and patent, yet if such shank and spindle had never before been attached to a knob made of potter's clay or porcelain, and if it required skill and thought and invention to attach the said knob of clay to the metal shank and spindle, so that the same would unite firmly, and make a solid and substantial article of manufacture, and if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, that the patent was valid, and asked the court so to instruct the jury, which the court refused to do; but, on the contrary thereof, instructed the jury, that if knobs of the same form, and for the same purposes with that described by the plaintiffs in their specifications, made of metal or other material, had been known and used in the United States prior to the alleged invention and patent of the plaintiffs, and if the spindle and shank, in the form used by the plaintiffs, had before that time been publicly known and used in the United States, and had been theretofore attached to metallic knobs by means of the dovetail and the infusions of melted metal, as the same is directed in the specification of the plaintiffs to be attached to the knob of potter's clay or porcelain, so that if the knob of clay or porcelain

Page 52 U. S. 253

is the mere substitution of one material for another, and the spindle and shank be such as were theretofore in common use, and the mode of connecting them to the knob by dovetail be the same that was theretofore in use in the United States, the material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover. The counsel for the defendants asked the court to instruct the jury that if they should be satisfied that anyone of the patentees was the original inventor of the article in question, and that the same was new and useful, yet if they should be satisfied from the evidence that all the patentees did not participate in the invention, the patent is void, and the plaintiffs cannot recover. The court gave the above, modified by the remark, that the patent was prima facie evidence that the invention was joint, though the fact might be disproved on the trial; and the court remarked, there was no evidence except that of a slight presumption against the joint invention as proved by the patent; to which refusal of the court to instruct the jury as asked by the counsel for the plaintiffs, and to the instructions given, the plaintiffs, by their counsel, except, and pray the court to sign this their bill of exceptions."

== Maura ==

"The plaintiffs offered in evidence the patent specifications and drawings, and other evidence, tending to prove the originality, novelty, and usefulness of the inventions as described in said specification; and other evidence, tending to show the violation of said patent by the defendant, and rested. Whereupon the defendants offered evidence tending to show that the said alleged invention was not originally invented by anyone of the said patentees; and that if said invention was original with any of the said patentees, it was not the joint invention of all of said patentees; and other evidence, tending to show that the mode of fastening the shank or collet to the knob, adopted by the plaintiffs, and in said specification described, had been known and used in Middletown, Connecticut, prior to the alleged inventions of the plaintiffs, as a mode of fastening shanks or collets to metallic knobs. And the evidence being closed, the counsel for the plaintiffs insisted in the argument, that, although the knob, in the form in which it is patented, may have been known and used in the United States prior to their invention and patent; and although the shank and spindle, by which it is attached, may have been known and used in the United States prior to said invention and patent, yet if such shank and spindle had never before been attached to a knob made of potter's clay or porcelain, and if it required skill and thought and invention to attach the said knob of clay to the metal shank and spindle, so that the same would unite firmly, and make a solid and substantial article of manufacture, and if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, that the patent was valid, and asked the court so to instruct the jury, which the court refused to do; but, on the contrary thereof, instructed the jury, that if knobs of the same form, and for the same purposes with that described by the plaintiffs in their specifications, made of metal or other material, had been known and used in the United States prior to the alleged invention and patent of the plaintiffs, and if the spindle and shank, in the form used by the plaintiffs, had before that time been publicly known and used in the United States, and had been theretofore attached to metallic knobs by means of the dovetail and the infusions of melted metal, as the same is directed in the specification of the plaintiffs to be attached to the knob of potter's clay or porcelain, so that if the knob of clay or porcelain Page 52 U. S. 253
is the mere substitution of one material for another, and the spindle and shank be such as were theretofore in common use, and the mode of connecting them to the knob by dovetail be the same that was theretofore in use in the United States, the material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover.

== Kevin ==

The test was that if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void, and this was a proper question for the jury.

And the evidence being closed, the counsel for the plaintiffs insisted in the argument, that, although the knob, in the form in which it is patented, may have been known and used in the United States prior to their invention and patent; and although the shank and spindle, by which it is attached, may have been known and used in the United States prior to said invention and patent, yet if such shank and spindle had never before been attached to a knob made of potter's clay or porcelain, and if it required skill and thought and invention to attach the said knob of clay to the metal shank and spindle, so that the same would unite firmly, and make a solid and substantial article of manufacture, and if the said knob of clay or porcelain so attached were an article better and cheaper than the knob theretofore manufactured of metal or other materials, that the patent was valid, and asked the court so to instruct the jury, which the court refused to do; but, on the contrary thereof, instructed the jury, that if knobs of the same form, and for the same purposes with that described by the plaintiffs in their specifications, made of metal or other material, had been known and used in the United States prior to the alleged invention and patent of the plaintiffs, and if the spindle and shank, in the form used by the plaintiffs, had before that time been publicly known and used in the United States, and had been theretofore attached to metallic knobs by means of the dovetail and the infusions of melted metal, as the same is directed in the specification of the plaintiffs to be attached to the knob of potter's clay or porcelain, so that if the knob of clay or porcelain

Page 52 U. S. 253
is the mere substitution of one material for another, and the spindle and shank be such as were theretofore in common use, and the mode of connecting them to the knob by dovetail be the same that was theretofore in use in the United States, the material being in common use, and no other ingenuity or skill being necessary to construct the knob than that of an ordinary mechanic acquainted with the business, the patent is void, and the plaintiffs are not entitled to recover. The counsel for the defendants asked the court to instruct the jury that if they should be satisfied that anyone of the patentees was the original inventor of the article in question, and that the same was new and useful, yet if they should be satisfied from the evidence that all the patentees did not participate in the invention, the patent is void, and the plaintiffs cannot recover. The court gave the above, modified by the remark, that the patent was prima facie evidence that the invention was joint, though the fact might be disproved on the trial; and the court remarked, there was no evidence except that of a slight presumption against the joint invention as proved by the patent; to which refusal of the court to instruct the jury as asked by the counsel for the plaintiffs, and to the instructions given, the plaintiffs, by their counsel, except, and pray the court to sign this their bill of exceptions."

Talk:Metabolit Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings, 370 F.3d 1354 (2004)

2010-01-25T12:43:08Z

Kevin: /* Kevin */ new section

== Maura ==

In most cases, the best source for discerning the proper context of claim terms is the patent specification wherein the patent applicant describes the invention. In addition to providing contemporaneous technological context for defining claim terms, the patent applicant may also define a claim term in the specification "in a manner inconsistent with its ordinary meaning." Boehringer Ingelheim Vetmedica, Inc. v. Schering-PloughCorp., 320 F.3d 1339, 1347 (Fed.Cir.2003) (citing Teleflex, 299 F.3d at 1325-26). In other words, a patent applicant may define a term differently from its general usage in the relevant community, and thus expand or limit the scope of the term in the context of the patent claims. Id. Therefore, the primary aids to supply the context for interpretation of disputed claim terms are in the intrinsic record. Vitronics, 90 F.3d at 1582 (Fed.Cir.1996). 19
("[C]onsultation of extrinsic evidence is particularly appropriate to ensure that [the court's] understanding of the technical aspects of the patent is not entirely at variance with the understanding of one skilled in the art."); Vitronics, 90 F.3d at 1585. Another excellent source of context for disputed terms is dictionary definitions and treatises. See, e.g., Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002) ("[D]ictionaries, encyclopedias and treatises are particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms."). 21
An examination of the prosecution history of this patent brings the meaning of the preamble into focus. As originally filed, claim 13 did not contain the "correlating" step. The examiner rejected claim 13 under 35 U.S.C. § 112 because it did not "recite discrete, sequential process steps, for example, obtaining a sample,contacting the sample with, etc. The final step should be clearly related to the preamble of the claim." Rather than add a second step as the examiner suggested, however, the applicant responded: "[A]s applicants are the first to detect cobalamin or folate deficiency by assaying body fluids for total homocysteine, it is believed that they are entitled to a claim of equivalent scope, not limited to any particular steps or methods." After this response, the examiner dropped the § 112 objection, but rejected claim 13 under § 102: "In the absence of a correlation step, the preamble of claim 13 merely recites an intended use of the invention. The claim lacks a positive limitation for correlating to a particular condition and has only one method step recited." At that point, the applicant added the recommended "correlating" step. The examiner then allowed claim 13. 27
("Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement.")
Active Inducement 38
Section 271(b) of title 35 provides: "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b) (2000). Although not express in the statute, this section requires proof of intent to induce infringement. See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.Cir.1990) ("proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement"). A patentee may prove such intent through circumstantial evidence, much like direct infringement as discussed above. See Water Techs. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.Cir.1988) (noting that "circumstantial evidence may suffice" in proving intent). 39

Therefore, this court affirms the finding of indirect infringement based on the inducement analysis. This court declines to consider contributory infringement.
Invalidity 42
A patent issued from the United States Patent and Trademark Office (PTO) bears the presumption of validity under 35 U.S.C. § 282. An accused infringer, therefore, must prove patent invalidity under the clear and convincing evidentiary standard. Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272 (Fed.Cir.2000)

First, LabCorp contends that the "correlating" step in claim 13 is indefinite. 35 U.S.C. § 112, second paragraph, provides: "The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2 (2000). The requirement to "distinctly" claim means that the claim must have a meaning discernible to one of ordinary
skill in the art when construed according to correct principles. Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed.Cir.2001); Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1547 (Fed.Cir.1984). Only when a claim remains insolubly ambiguous without a discernible meaning after all reasonable attempts at construction must a court declare it indefinite. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed.Cir.2001). In this case, as already noted, the claim construction exercise at the trial court produced a discernible and clear meaning. No "material ambiguities" cloud the meaning of "correlating" to the extent that one of skill in the art would find the claim wholly indefinite. All Dental Prodx, LLC v. Advantage Dental Prods., Inc., 309 F.3d 774, 780 (Fed.Cir.2002) ("Only after a thorough attempt to understand the meaning of a claim has failed to resolve material ambiguities can one conclude that the claim is invalid for indefiniteness."). This court affirms the trial court's denial of JMOL on this ground. 44
LabCorp next argues that the specification does not adequately describe the claimed invention under 35 U.S.C. § 112, first paragraph: 45
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains or with which it is most nearly connected, to make and use the same.... 46
35 U.S.C. § 112, ¶ 1. This language contains both the written description and enablement tests for sufficiency of the specification's disclosure. 47
With regard to the written description test, this court has previously explained, "the test for compliance with § 112 has always required sufficient information in the original disclosure to show that the inventor possessed the invention at the time of the original filing." Moba, 325 F.3d at 1320 (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed.Cir.1991)).

The prior art reference (Refsum) does not anticipate claim 13 under 35 U.S.C. § 102. "A prior art reference anticipates a patent claim if the reference discloses, either expressly or inherently, all of the limitations of the claim." EMI Group N. Am., Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 1350 (Fed.Cir.2001) (citation omitted).

A prior art reference that discloses a genus still does not inherently disclose all species within that broad category. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1262 (Fed.Cir.1989) ("Under [defendant's] theory, a claim to a genus would inherently disclose all species. We find [this] argument wholly meritless...."). 53

The test of obviousness in 35 U.S.C. § 103 is the primary condition of patentability. Obviousness hinges on four factual findings: "(1) the scope and content of the prior art; (2) the differences between the prior art and the claims; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness." Nat'l Steel Car, Ltd., v. Can. Pac. Ry., Ltd., 357 F.3d 1319, 1334 (Fed.Cir.2004).

("Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination." (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed.Cir.1984))).

Beyond these points, however, the record contains evidence of objective indicia that support the jury's nonobviousness verdict. The record, for example, shows that skilled artisans were initially skeptical about the invention. See Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1556 (Fed.Cir.1987) (initial skepticism of experts is relevant to nonobviousness). The record also shows that Metabolite has licensed the invention to eight companies. In re Sernaker, 702 F.2d 989, 996 (Fed.Cir.1983) (extensive licensing supports nonobviousness). Substantial evidence, therefore, supports the implied jury factual findings that support its legal conclusion that claim 13 is not obvious in light of the Refsum article and the cited secondary references. 56

Accordingly, a licensor who has implicitly covenanted not to sue a licensee by virtue of the license agreement itself cannot seek a declaratory judgment of infringement. Moreover, in light of LabCorp's continuing royalty payments on the panel test, LabCorp cannot itself challenge the validity of a claim for which it continues to pay royalties.

The jury found that "LabCorp breached the license agreement by terminating it" for the Abbott test. LabCorp contends that it did not formally terminate the contract, because the contract requires that the licensee provide written notice. The record contains no evidence of a written termination. The record does show, however, that LabCorp stopped paying royalties on the total homocysteine tests. Refusal to pay royalties is a material breach of the license.

Read, 970 F.2d at 828 ("To enable appellate review, a district court is obligated to explain the basis for the award, particularly where the maximum amount is imposed.").

SCHALL, Circuit Judge, concurring-in-part, dissenting-in-part. 77
I begin with what I see as the controlling principles of claim construction. When interpreting the claims of a patent, the court should look first to the intrinsic evidence of record: the claim, the specification, and, if in evidence, the prosecution history. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). There exists within the intrinsic evidence a "hierarchy of analytical tools." Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d 1335, 1344 (Fed.Cir.1998). First, the language of the claim should be considered — "[t]he actual words of the claim are the controlling focus." Id. The claim language defines the bounds of claim scope. Bell Communications Research, Inc. v. Vitalink Communications Corp., 55 F.3d 615, 619-20 (Fed.Cir.1995). Because the claims define the patentee's right to exclude others, "the claim construction inquiry, therefore, begins and ends in all cases with the actual words of the claim." Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1248 (Fed.Cir.1998). 86

We have repeatedly stated that "[c]ourts can neither broaden nor narrow claims to give the patentee something different than what he has set forth." Tex. Instruments Inc. v. U.S. Int'l Trade Comm'n, 988 F.2d 1165, 1171 (Fed.Cir.1993) (quoting Autogiro Co. v. United States, 181 Ct.Cl. 55, 384 F.2d 391, 396 (1967)); Oak Tech., Inc. v. Int'l Trade Comm'n, 248 F.3d 1316, 1329 (Fed.Cir.2001). In this case, however, the majority has permitted claim 13 to be infringed even when homocysteine assays result in unelevated levels. The majority thereby broadens claim 13 to also include, although it is not expressly claimed, correlating unelevated levels of homocysteine with the absence of a vitamin deficiency. 90

==Courtney==
This court reviews a denial of JMOL without deference by reapplying the JMOL standard. Thus, this court will affirm a denial of JMOL unless substantial evidence does not support the jury's factual findings or the verdict rests on legal errors. Waner v. Ford Motor Co., 331 F.3d 851, 855 (Fed.Cir.2003). 14

Whether a specification complies with the written description requirement of 35 U.S.C. § 112, paragraph 1, is a question of fact that this court reviews for substantial evidence. Union Oil v. Atl. Richfield Co., 208 F.3d 989, 996 (Fed.Cir.2000). Enablement is a matter of law that this court reviews without deference; however, this court reviews the factual underpinnings of enablement for substantial evidence. BJ Servs. Co. v. Halliburton Energy Servs., Inc., 338 F.3d 1368, 1371-72 (Fed.Cir.2003). Similarly, this court reviews the legal determination of obviousness without deference, but reviews its factual underpinnings for substantial evidence. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1323 (Fed.Cir.2002). This court reviews a legal finding of indefiniteness without deference. BJ Servs., 338 F.3d at 1371-72. Whether a prior art reference anticipates a patent is a factual determination that this court reviews for substantial evidence. Teleflex, 299 F.3d at 1323. 15

Whether infringement was willful is a question of fact that this court reviews for substantial evidence. Crystal Semiconductor Corp. v. TriTech Microelecs. Int'l, Inc., 246 F.3d 1336, 1346 (Fed.Cir. 2001). This court reviews an award of enhanced damages and grant of a permanent injunction for abuse of discretion. Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1272 (Fed.Cir.1999).

The specification confirms that the claim language does not require as part of the method a confirmation that the elevated level causes some deleterious symptoms or abnormalities. LabCorp points to portions of the specification that discuss the relationship between the elevated levels and either clinical or hematologic symptoms. See, e.g., '658 patent, col. 10, ll. 56-61; col. 12, ll. 8-15. LabCorp would expand those references to require some confirmatory step in the claim. The specification, however, does not require such a confirmatory step. Rather, the specification at one juncture acknowledges that the method can show vitamin deficiency without any clinical symptoms: "These findings led us to conclude that large numbers of patients with cobalamin deficiency lack the `typical' clinical and hematologic features usually expected to be present in cobalamin deficiency...." Id. at col. 11, ll. 40-45. In other words, the specification shows that the method can show an association between elevated levels and vitamin deficiency without any further clinical symptoms. Thus, the district court properly refused to import into the claims LabCorp's proposed limitation from the specification. The specification itself does not support such a limitation on the meaning of the claims. 29

As noted earlier, the district court construed "correlating" to mean a "mutual or reciprocal relationship between" the elevated levels and the vitamin deficiencies. The inventors discovered that assaying total homocysteine correlated with (or predicted relatively accurately) whether a patient had a deficiency of cobalamin or folate. Id. at col. 4. ll. 17-23; col. 10, ll. 35-42. The specification explains that an elevated level of total homocysteine often indicates a deficiency, while a non-elevated level indicates no deficiency. For example, the overview of the invention notes: "This invention pertains to ... methods for determining whether said warm-blooded animal has a cobalamin deficiency, a folic acid deficiency, neither, or both." Id. at col. 1, ll. 13-15 (emphasis added). Next, in the summary of the invention, the patentee stated: "Accordingly, assays for homocysteine can be used to determine the presence or absence of cobalamin and/or folic acid deficiency in warm-blooded animals." Id. at col. 5, l. 66-col. 6, l. 1 (emphasis added). This court observes that the perfect symmetry between "mutual or reciprocal" and "presence or absence" shows that the district court correctly placed the term "correlating" in its proper context with its proper meaning.

== Kevin ==

UPI's successor, Competitive Technologies Inc., licensed the patent to Metabolite, which in turn sublicensed the patent to Roche Biomedical Laboratories (now LabCorp). LabCorp, a laboratory testing company, originally performed total homocysteine assays under the sublicense. But in 1998, LabCorp switched to a total homocysteine assay developed by Abbott Laboratories (Abbott test) and discontinued royalty payments to Metabolite for total homocysteine assays. 10

In response, Metabolite sued LabCorp for infringement. The district court construed the disputed claim terms, and the case proceeded to a jury. The jury found that LabCorp breached its license agreement with Metabolite, that LabCorp willfully infringed the '658 patent, and that the claims at issue are not invalid. The jury assessed damages against LabCorp of $3,652,724.61 for breach of contract and $1,019,365.01 for infringement. The district court entered judgment against LabCorp and awarded damages as assessed by the jury. 11
After the trial, the district court denied LabCorp's motion for JMOL on infringement, breach of contract, invalidity, and willful infringement. In light of the finding of willfulness, the district court doubled the jury's infringement award to $2,038,730.02. The district court also permanently enjoined LabCorp from using the homocysteine-only test. LabCorp appeals the district court's claim construction as well as the denial of JMOL.
The primary challenge to the jury's indirect infringement verdict requires this court to review the district court's construction of the claim term "correlating." The infringement inquiry is a two-step process. This court construes the disputed claim terms and then compares the properly construed claims to the accused device. Cybor Corp., 138 F.3d at 1454. Thus, this court first reviews the district court's claim construction. 17

As always, the claim language itself governs its meaning. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996). This court construes the meaning of claim language according to its usage and context. ResQNet.com, Inc. v. Lansa, Inc., 346 F.3d 1374, 1378 (Fed.Cir.2003). The touchstone for discerning the usage of claim language is the understanding of those terms among artisans of ordinary skill in the relevant art at the time of invention. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.Cir.2001). Indeed, normal rules of usage create a "heavy presumption" that claim terms carry their accustomed meaning in the relevant community at the relevant time. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.Cir.2002) (citing Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999)). Thus, this court sets the meaning of claim terms by ascertaining their technological and temporal context. 18
In most cases, the best source for discerning the proper context of claim terms is the patent specification wherein the patent applicant describes the invention. In addition to providing contemporaneous technological context for defining claim terms, the patent applicant may also define a claim term in the specification "in a manner inconsistent with its ordinary meaning." Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1347 (Fed.Cir.2003) (citing Teleflex, 299 F.3d at 1325-26). In other words, a patent applicant may define a term differently from its general usage in the relevant community, and thus expand or limit the scope of the term in the context of the patent claims. Id. Therefore, the primary aids to supply the context for interpretation of disputed claim terms are in the intrinsic record. Vitronics, 90 F.3d at 1582 (Fed.Cir.1996). 19

Another tool to supply proper context for claim construction is the prosecution history. As in the case of the specification, the patent applicant's consistent usage of a term in prosecuting the patent may enlighten the meaning of that term. Middleton, Inc. v. Minn. Mining & Mfg. Co., 311 F.3d 1384, 1388 (Fed.Cir.2002) (a patent applicant may "clearly and unambiguously" disavow claim scope during prosecution). 20

This court also acknowledges the relevance of extrinsic evidence, often presented in the form of expert testimony. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1309 (Fed.Cir.1999) ("[C]onsultation of extrinsic evidence is particularly appropriate to ensure that [the court's] understanding of the technical aspects of the patent is not entirely at variance with the understanding of one skilled in the art."); Vitronics, 90 F.3d at 1585. Another excellent source of context for disputed terms is dictionary definitions and treatises. See, e.g., Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1202 (Fed.Cir.2002) ("[D]ictionaries, encyclopedias and treatises are particularly useful resources to assist the court in determining the ordinary and customary meanings of claim terms."). 21

As noted before, these claim construction aids inform the court's task of ascertaining the meaning of the claim terms to one of ordinary skill in the art at the time of invention. Moba v. Diamond Automation, Inc., 325 F.3d 1306, 1315 (Fed.Cir.2003) ("Moreover, as this court has repeatedly counseled, the best indicator of claim meaning is its usage in context as understood by one of skill in the art at the time of invention."); Ferguson Beauregard v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed.Cir.2003) ("The words used in the claims must be considered in context and are examined through the viewing glass of a person skilled in the art."); Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed.Cir.2001) ("[I]t is important to bear in mind that the viewing glass through which the claims are construed is that of a person skilled in the art."); Markman v. Westview Instruments, Inc., 52 F.3d 967, 986 (Fed.Cir.1995) (en banc) ("[T]he focus is on the objective test of what one of ordinary skill in the art at the time of the invention would have understood the term to mean."). In this case, as evidenced by the jury instruction, the parties agreed that the level of ordinary skill in this field of invention was "a person having a medical degree and experience in researching the amino acid homocysteine and its relationship to diseases." 22
On appeal, LabCorp argues that claim 13's correlating step should be construed as establishing that an elevated level of homocysteine is caused by a "shortage of cobalamin which causes a hematologic or neuropsychiatric abnormality," or a "deficiency of folate which causes a hematologic abnormality." LabCorp interprets the specification to clearly define a "deficiency of cobalamin" as the presence of a clinical or hematologic syndrome or both that responds to cyano-cobalamin treatment, and to acknowledge that some clinical or hematologic syndrome or neuropsychiatric abnormality must be present. Thus, LabCorp contends that the correlation step of claim 13 should be construed to require a showing of a separate hematologic or neuropsychiatric symptom to confirm the "correlation." 24

The claim states that the method must correlate "an elevated level of total homocysteine ... with a deficiency of cobalamin or folate." This language does not require a further association between the level of total homocysteine and either a hematologic or neuropsychiatric abnormality or both. The claim only requires association of homocysteine levels with vitamin deficiencies. It requires no further correlation to confirm the relationship to vitamin deficiencies. The claim simply says nothing about a confirmatory step or a further correlation beyond the stated relationship. 25

This prosecution history ties the preamble directly to the "correlating" step. Specifically, the recitation of the intended use in the preamble makes this invention a method for detecting a vitamin deficiency. "Detecting" in the medical context requires evaluation of all test results, both positive and negative, to evaluate a patient's condition. For example, the results of a pregnancy test can either be positive or negative. Either result is informative to the patient. Similarly, in this case, the assaying step can identify an elevated or an unelevated level of total homocysteine. Then the "correlating" step can identify, in cases of elevated levels, a relationship or not to vitamin deficiency. The results in either the assaying or correlating steps are informative. Thus, the preamble supports the district court's construction that "correlating" includes ascertaining either a mutual or reciprocal relationship between total homocysteine and a vitamin deficiency. The preamble does not require this invention to show a further association with an abnormality. 28

As explained above, the mutual relationship is established when an elevated homocysteine level is present, whereas a reciprocal relationship is established when an elevated homocysteine level is absent. LabCorp's new damages argument, in essence, attempts to change its claim construction position to read out the reciprocal relationship that it initially urged. This court, as it does now, has previously declined such invitations. Interactive Gift Express, 256 F.3d at 1346 (Fed.Cir.2001) ("[A] party will be judicially estopped from asserting a position on appeal that is inconsistent with a position it advocated at trial and persuaded the trial court to adopt."). For all purposes in this litigation, this court affirms the district court's construction of the "correlating" step.
Direct Infringement 35
The jury found LabCorp liable for indirect infringement. The record must show the presence of direct infringement, however, to support the verdict of indirect infringement. Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993) ("Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement."). Thus, this court must examine whether there is substantial evidence in the record of the physicians' direct infringement. In that respect, the parties hinge the direct infringement issue solely on whether the physicians perform the correlating step.1 Hence, we review the record for substantial evidence of that step. 36
Substantial evidence supports the jury's verdict. The record shows that physicians order assays and correlate the results of those assays, thereby directly infringing. LabCorp's Discipline Director, Dr. Peter Wentz, testified that the physicians receiving total homocysteine assays from LabCorp carry out the correlating step.2 Specifically, Dr. Wentz testified that "the correlating step ... [is] a separate, distinct step that's performed by the physician who receives ... our results." Inventor Dr. Sally Stabler also testified that it would be malpractice for a doctor to receive a total homocysteine assay without determining cobalamin/folate deficiency. 37

To support the verdict, the record does not need to contain direct evidence that every physician performed the "correlating" step. "It is hornbook law that direct evidence of a fact is not necessary. `Circumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.'" Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed.Cir.1986) (citing Michalic v. Cleveland Tankers, Inc., 364 U.S. 325, 330, 81 S.Ct. 6, 5 L.Ed.2d 20 (1960)). As discussed above, the record contains sufficient circumstantial evidence to permit the jury to imply that physicians directly infringe.

Active Inducement 38
Section 271(b) of title 35 provides: "Whoever actively induces infringement of a patent shall be liable as an infringer." 35 U.S.C. § 271(b) (2000). Although not express in the statute, this section requires proof of intent to induce infringement. See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.Cir.1990) ("proof of actual intent to cause the acts which constitute the infringement is a necessary prerequisite to finding active inducement"). A patentee may prove such intent through circumstantial evidence, much like direct infringement as discussed above. See Water Techs. v. Calco, Ltd., 850 F.2d 660, 668 (Fed.Cir.1988) (noting that "circumstantial evidence may suffice" in proving intent). 39
The record contains such evidence of intent. LabCorp's own publications supply much of this evidence. LabCorp publishes both Continuing Medical Education articles as well as a Directory of Services that are specifically targeted to the medical doctors ordering the LabCorp assays. These publications state that elevated total homocysteine correlates to cobalamin/folate deficiency and that this deficiency can be treated with vitamin supplements. LabCorp's articles thus promote total homocysteine assays for detecting cobalamin/folate deficiency. 40
Faced with these statements, LabCorp attempts to explain that these articles focus on heart disease rather than vitamin deficiency. As noted earlier, the patent does not require a correlation to some particular medical condition, but to a vitamin deficiency. The publications advocate use of the assay to identify a need for cobalamin/folate supplements. Thus, the vitamin deficiency remains the focus of the assay and the treatment (i.e., vitamin supplements). 41

Accordingly, a reasonable jury could find intent to induce infringement because LabCorp's articles state that elevated total homocysteine correlates to cobalamin/folate deficiency. Moreover, the publications recommend treatment of this deficiency with vitamin supplements. Because "[i]ntent is a factual determination particularly within the province of the trier of fact," Allen Organ Co. v. Kimball Int'l, Inc., 839 F.2d 1556, 1557 (Fed.Cir.1988), this court sees no reason to disturb the jury's finding regarding LabCorp's intent. Therefore, this court affirms the finding of indirect infringement based on the inducement analysis. This court declines to consider contributory infringement.
With regard to the written description test, this court has previously explained, "the test for compliance with § 112 has always required sufficient information in the original disclosure to show that the inventor possessed the invention at the time of the original filing." Moba, 325 F.3d at 1320 (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed.Cir.1991)). As in the claim construction section above, this court assesses the written description possession test "from the viewpoint of one of skill in the art." Moba, 325 F.3d at 1321. The record is replete with evidentiary support that physicians in homocysteine research, i.e., persons of ordinary skill in the art, understood from the specification that the '658 patent inventors possessed the "correlating" step at the time they filed the patent application. For example, the examiner suggested the word "correlating" to the '658 patentee, showing that the PTO read the specification to include that feature. Additionally, the record reflects that LabCorp's own expert and employees understood the meaning of "correlating." Accordingly, this court finds that substantial evidence supports the jury finding that claim 13 was adequately supported by the '658 patent's written description. 48

The specification also shows that the patentee enabled the claimed invention. In Union Pacific, this court held that a claim was not enabled because it did not disclose use of a "comparing" step. 236 F.3d at 691. However, in Union Pacific, the inventors "purposely excluded computer programming details" necessary to perform the "comparing" step. Id. at 690. In this case, the correlating step does not require computer technology or extensive computations. Instead, the record shows repeatedly that the correlating step is well within the knowledge of one of skill in this art. The correlating step is a simple conclusion that a cobalamin/folate deficiency exists vel non based on the assaying step. The patentee did not conceal or fail to disclose this correlation, but instead featured it as the centerpiece of the invention.
Refsum does disclose that total homocysteine should be used to investigate "perturbations of homocysteine metabolism in humans during disease or pharmacological interventions that affect metabolism of one-carbon compounds." Refsum, however, does not specifically mention cobalamin or folate deficiencies. Indeed, one of the '658 patent inventors, Dr. Stabler, testified that cobalamin and folate deficiencies constitute just such a perturbation that Refsum suggested warranted further investigation. Rather than necessarily containing the correlation between homocysteine and cobalamin or folate deficiencies, Refsum simply invites further experimentation to find such associations. An invitation to investigate is not an inherent disclosure. Construed most favorably for LabCorp, Refsum discloses no more than a broad genus of potential applications of its discoveries. A prior art reference that discloses a genus still does not inherently disclose all species within that broad category. See Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1262 (Fed.Cir.1989) ("Under [defendant's] theory, a claim to a genus would inherently disclose all species. We find [this] argument wholly meritless...."). LabCorp posits that claim 13 is obvious in view of the Refsum article when combined with other references disclosing that partial homocysteine assays could help diagnose cobalamin or folate deficiency. First, as noted above in the anticipation analysis, the examiner considered the Refsum article and also considered all but one of the secondary references that LabCorp contends render the invention obvious in combination with Refsum. The one reference that the examiner did not consider is cumulative of the others. Thus, the heavy burden of proof in the anticipation case also applies to obviousness. Hewlett-Packard, 909 F.2d at 1467. Next, the secondary references do not refer to total homocysteine, but rather to homocystine, one of the four components of total homocysteine. Thus, these secondary references do not add considerably to the Refsum disclosure. Finally, even if the secondary references disclosed total homocysteine, the record does not contain evidence showing that one of skill in the art would have been motivated to combine the various references. Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1372 (Fed.Cir.2000) ("Obviousness cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination." (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed.Cir.1984))). These points alone would suffice to support the jury verdict. 55

Beyond these points, however, the record contains evidence of objective indicia that support the jury's nonobviousness verdict. The record, for example, shows that skilled artisans were initially skeptical about the invention. See Hughes Tool Co. v. Dresser Indus., Inc., 816 F.2d 1549, 1556 (Fed.Cir.1987) (initial skepticism of experts is relevant to nonobviousness). The record also shows that Metabolite has licensed the invention to eight companies. In re Sernaker, 702 F.2d 989, 996 (Fed.Cir.1983) (extensive licensing supports nonobviousness). Substantial evidence, therefore, supports the implied jury factual findings that support its legal conclusion that claim 13 is not obvious in light of the Refsum article and the cited secondary references. 56
Id. 60
The facts of this case, however, demonstrate that there is no real case or controversy regarding the LabCorp panel test, alleged to infringe claim 18. Neither party disputes that the license is still in effect as to the panel tests that LabCorp performs. This license is, in essence, a licensor's covenant not to sue the licensee. Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1346 (Fed.Cir.2001) (citation omitted). In turn, this court has held that a covenant not to sue deprives a court of declaratory judgment jurisdiction. Amana Refrigeration, Inc. v. Quadlux, Inc., 172 F.3d 852, 855 (Fed.Cir.1999) (citing Super Sack Mfg. Corp. v. Chase Packaging Corp., 57 F.3d 1054, 1060 (Fed.Cir.1995)). Accordingly, a licensor who has implicitly covenanted not to sue a licensee by virtue of the license agreement itself cannot seek a declaratory judgment of infringement. Moreover, in light of LabCorp's continuing royalty payments on the panel test, LabCorp cannot itself challenge the validity of a claim for which it continues to pay royalties. Cf. Gen-Probe Inc., 359 F.3d at 1382 (holding that a licensee who continued paying royalties to the licensor did not have sufficient apprehension of suit giving rise to declaratory judgment subject matter jurisdiction). The district court's opinion concerning the panel test's infringement of claim 18 was merely advisory. Accordingly, the district court lacked subject matter jurisdiction, and this court vacates that portion of the district court's judgment.
Breach of contract 61
The interpretation of a contract is a matter of state law. Power Lift, Inc. v. Weatherford Nipple-Up Sys., Inc., 871 F.2d 1082, 1085 (Fed.Cir.1989). A license agreement is at its core a contract. In this case, both parties agree that New Jersey law governs their rights and obligations under the license, including the termination clause. Under New Jersey law, breach of contract is a question of fact properly reserved for a jury. Magnet Res., Inc. v. Summit MRI, Inc., 318 N.J.Super. 275, 723 A.2d 976, 982 (App.1998). Thus, the standard of review for this court is whether substantial evidence supports the jury's finding. 62

The jury found that "LabCorp breached the license agreement by terminating it" for the Abbott test. LabCorp contends that it did not formally terminate the contract, because the contract requires that the licensee provide written notice. The record contains no evidence of a written termination. The record does show, however, that LabCorp stopped paying royalties on the total homocysteine tests. Refusal to pay royalties is a material breach of the license. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1346 (Fed.Cir.2000). A material breach, in turn, constitutes termination even where the license agreement termination clause does not expressly so provide. See Apex Pool Equip. Corp. v. Lee, 419 F.2d 556, 562 (2d Cir.1969) (holding that a licensee's material breach implicitly gives rise to a licensor's right to terminate); see also Ross-Simons of Warwick, Inc. v. Baccarat, Inc., 217 F.3d 8, 10 (1st Cir.2000) ("Every contract involves a bargained-for exchange of obligations, the material breach of which by one party gives the other party a right to terminate."); Restatement (Second) of Contracts § 237 (1981). This court, therefore, affirms the jury's finding that LabCorp breached the license agreement.

SCHALL, Circuit Judge, concurring-in-part, dissenting-in-part. 77

I agree with the majority's conclusions with respect to validity, the absence of a case or controversy regarding infringement of claim 18, breach of contract, enhanced damages, and the district court's injunction. However, I respectfully dissent from the majority's construction of claim 13 of the ' 658 patent. Because I think claim 13 covers only the correlation of elevated levels of homocysteine, I would remand the case for a recalculation of the damages resulting from indirect infringement. 78

In essence, "correlating" means to relate the presence of an elevated total homocysteine level to either a cobalamin or folate deficiency, or both (i.e., a mutual relationship), and also to relate the absence of an elevated total homocysteine level to a deficiency in neither (i.e., a reciprocal relationship).... [T]he specification and prosecution history confirm that the claim language "correlating," in the understanding of one of ordinary skill in this art field at the time of invention, includes both a mutual relationship between the presence of an elevated level of homocysteine and a vitamin deficiency and a reciprocal relationship between the absence of an elevated level of homocysteine and no vitamin deficiency. 84

In my view, the majority impermissibly expands the scope of claim 13 beyond the actual words of the claim. 85In my view, the majority impermissibly expands the scope of claim 13 beyond the
actual words of the claim. 85

When homocysteine levels are elevated in individuals without inherited defects, at least one of folate or cobalamin is deficient. 94
'658 patent, col. 9, ll. 23-29, 38-40 (emphases added). Nor is there any evidence from the prosecution history that the patentee relinquished this claim construction in an amendment or in an argument to overcome or distinguish a prior art reference. Vitronics, 90 F.3d at 1582. Accordingly, I construe Claim 13 to require an assay that demonstrates an "elevated" homocysteine level, or one "raised above the normal range," in order for the claim to be practiced. 95
Pursuant to this claim construction, claim 13 is only infringed when the assays performed by LabCorp reveal elevated levels of homocysteine. As LabCorp explains, and as Metabolite does not dispute, approximately eighty to eighty-four percent of the assays LabCorp processes reveal unelevated levels of homocysteine. I would therefore vacate the jury's verdict that the assays resulting in unelevated levels of homocysteine infringed claim 13, and further vacate and remand the jury's verdict on damages for recalculation based only on those infringing assays that demonstrate elevated levels of homocysteine.

Talk:Chester v. Miller (full text)

2010-01-25T12:26:19Z

Kevin: /* Kevin */ new section

== Maura ==

The EIC decided that the '280 patent, a parent of Chester's '122 CIP application, was section 102(b) prior art with respect to the CIP claims 1-16, 29, and 30. The EIC so decided because he found the '280 patent was a "printed publication" in existence more than one year before the '122 application's filing date. He also concluded that the '280 patent did not support the subject matter claimed inthe '122 application. See 35 U.S.C. Secs. 102(b) & 120 (1988); In re Gosteli, 872 F.2d 1008, 1010-11, 10 USPQ2d 1614, 1616 (Fed.Cir.1989). The EIC thus rejected claims 1-16, 29, and 30 as unpatentable under section 102(b) over the '280 reference.

In the instant case, the EIC simply found that the '280 reference (parent) did not support the '122 application claims because as to them it failed to meet the written description requirement.3 12

One of our predecessor courts, the Court of Customs and Patent Appeals (CCPA), however, made clear that differences exist between the requirements for claim-anticipating disclosures and for claim- supporting disclosures. In re Lukach, 442 F.2d at 969-70, 169 USPQ at 796-97. The CCPA noted in Lukach that although a patent might contain a disclosure satisfying the written description requirement with respect to the claims in that patent, it could still be section 102(b) prior art as to broader claims of a subsequent application although not containing a disclosure satisfying the section 112 description requirement with respect to the anticipated broader claims. See id. at 969-70, 169 USPQ at 797. This apparent anomaly is most likely to occur when the prior art reference discloses a species of a genus sought to be claimed. See, e.g., id. That is exactly what happened in the instant case, and accordingly we see no impermissible anomaly or logical inconsistency in the EIC's rejection. 13

Chester thus appears to make a procedural argument citing 35 U.S.C. Sec. 132 (1988) which he noted requires rejections to include a statement of the "reasons."5 We are unpersuaded that section 132 supports the proposition suggested by Chester--that the PTO is required to state specifically that a prior art reference describes and enables claims rejected as anticipated. That section does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant "at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence."

We do agree with Chester that the interference rules permit further consideration of the patentability of Miller's claims after denial of Chester's motion for judgment, but only if proper procedures are followed. Here, Chester failed to initiate the proper procedures. Accordingly, we also hold the Board's refusal to consider his untimely motion for reconsideration was correct.

==Courtney==

Anticipation is a question of fact we review under the clearly erroneous standard. In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed.Cir.1986). The EIC decided that the '280 patent, a parent of Chester's '122 CIP application, was section 102(b) prior art with respect to the CIP claims 1-16, 29, and 30. The EIC so decided because he found the '280 patent was a "printed publication" in existence more than one year before the '122 application's filing date. He also concluded that the '280 patent did not support the subject matter claimed in the '122 application. See 35 U.S.C. Secs. 102(b) & 120 (1988); In re Gosteli, 872 F.2d 1008, 1010-11, 10 USPQ2d 1614, 1616 (Fed.Cir.1989). The EIC thus rejected claims 1-16, 29, and 30 as unpatentable under section 102(b) over the '280 reference. As noted, pursuant to 37 C.F.R. Sec. 1.640(d)(1) (1989), the EIC issued an order to show cause why judgment should not be entered against Chester. We hold that Chester failed to overcome the prima facie case of anticipation, and thus the Board properly found Chester's claims 1-16, 29, and 30 unpatentable to Chester. 11

Although in some circumstances we could agree with Chester's implicit argument that a prima facie case of anticipation could not be established if an EIC concluded both that the subject matter claimed in a CIP application is not enabled by a parent application2 and that the claims are anticipated by the parent which has issued as a patent, we cannot agree that this is always so. For example, a CIP's claim for a genus might not be enabled by a parent's disclosure, but that parent may enable a species that anticipates the CIP's claim for a genus. Cf. In re Lukach, 58 CCPA 1233, 442 F.2d 967, 969-70, 169 USPQ 795, 796-97 (1971). Nonetheless, we need not decide whether those are the circumstances here. In the instant case, the EIC simply found that the '280 reference (parent) did not support the '122 application claims because as to them it failed to meet the written description requirement.3 12

We conclude that a prima facie case of anticipation was established justifying the EIC's decision to issue a show cause order. Thus, the burden was properly placed on Chester. Cf. In re King, 801 F.2d at 1327, 231 USPQ at 138. Chester failed to sustain his burden, however. No argument was offered that the application claims do not read on the '280 patent claims. Nor did Chester assert that the '280 patent is not prior art by attempting to show that the '280 specification met the written description requirement with respect to the '122 application claims. Before us, Chester merely attacked the holding of Lukach and presented the straw man that the Board found insufficient enablement. Accordingly, we are unpersuaded that the Board's finding of anticipation of claims 1-16, 29, and 30 was clearly erroneous.

A claim is anticipated under section 102 if a prior art reference discloses every element of the claim. King, 801 F.2d at 1326, 231 USPQ at 138. The EIC rejected Chester's claims 17-28 under section 102 over the '403 patent.4 Chester responded that the EIC had not specified that the '403 reference provided written description or enablement of the subject matter of the rejected claims.

== Kevin ==

BACKGROUND 2
This single count interference involves Miller's '465 patent, which issued July 20, 1982, and Chester's '122 application, filed July 15, 1983. Chester's application was filed as a continuation-in-part (CIP) application of two copending (commonly assigned) applications, and the lineage of those applications is noted in Figure 1, below. 3The subject matter of this interference relates to a process for catalytically cracking a feedstock1 to yield products such as gasoline by contacting the feedstock with a catalyst that has two components: (1) a large pore crystalline aluminosilicate zeolite and (2) a shape selective crystalline aluminosilicate zeolite. "Shape selective" is used to mean that the second zeolite component has smaller pores than the first component; the second zeolite's smaller pores admit small hydrocarbon molecules but exclude certain larger hydrocarbon molecules. 5
The interference involved numerous preliminary motions by both parties. In particular, the Examiner-in-Chief (EIC) granted one of Miller's motions for judgment on the ground that Chester's claims 1-16, 29, and 30 are unpatentable under 35 U.S.C. Sec. 102(b) (1988) over U.S. Patent No. 4,309,280 ('280). The '280 patent was part of Chester's '122 CIP application's lineage (see Figure 1) and Chester had relied on the benefit of the earlier filing date of the '280 patent under 35 U.S.C. Sec. 120 (1988). Acting pursuant to 37 C.F.R. Sec. 641 (1989), the EIC also rejected Chester's claims 17-28 (Chester's remaining claims corresponding to the count) as unpatentable under 35 U.S.C. Secs. 102 or 103 (1988) over U.S. Patent No. 3,758,403 ('403), not shown in Figure 1. 6
The EIC further granted Miller's alternative motion for judgment against Chester on all of his application claims on the ground that Chester was estopped to contend that the claims were patentable to Chester because Chester had disclaimed subject matter during the prosecution of the parent applications. Based on these decisions and pursuant to 37 C.F.R. Sec. 1.640(d)(1) (1989), Chester was ordered to show cause why judgment should not be entered against him. 7
In response, Chester filed a paper arguing that judgment should not be entered against him (Show Cause Paper). But he did not request a final hearing or seek a testimony period. Chester's Show Cause Paper did address the motions granted and also requested reconsideration of the EIC's denial of one of Chester's motions for judgment on the ground that Miller's claims were unpatentable to Miller. We conclude that a prima facie case of anticipation was established justifying the EIC's decision to issue a show cause order. Thus, the burden was properly placed on Chester. Cf. In re King, 801 F.2d at 1327, 231 USPQ at 138. Chester failed to sustain his burden, however. No argument was offered that the application claims do not read on the '280 patent claims. Nor did Chester assert that the '280 patent is not prior art by attempting to show that the '280 specification met the written description requirement with respect to the '122 application claims. Before us, Chester merely attacked the holding of Lukach and presented the straw man that the Board found insufficient enablement. Accordingly, we are unpersuaded that the Board's finding of anticipation of claims 1-16, 29, and 30 was clearly erroneous.
II. Chester's Claims 17-28 14
A claim is anticipated under section 102 if a prior art reference discloses every element of the claim. King, 801 F.2d at 1326, 231 USPQ at 138. The EIC rejected Chester's claims 17-28 under section 102 over the '403 patent.4 Chester responded that the EIC had not specified that the '403 reference provided written description or enablement of the subject matter of the rejected claims.Chester thus appears to make a procedural argument citing 35 U.S.C. Sec. 132 (1988) which he noted requires rejections to include a statement of the "reasons."5 We are unpersuaded that section 132 supports the proposition suggested by Chester--that the PTO is required to state specifically that a prior art reference describes and enables claims rejected as anticipated. That section does not mandate that in order to establish prima facie anticipation, the PTO must explicitly preempt every possible response to a section 102 rejection. Section 132 merely ensures that an applicant "at least be informed of the broad statutory basis for [the rejection of] his claims, so that he may determine what the issues are on which he can or should produce evidence." In re Hughes, 52 CCPA 1355, 345 F.2d 184, 185, 145 USPQ 467, 468 (1965). Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection. See, e.g., In re Wilke, 50 CCPA 964, 314 F.2d 558, 562, 136 USPQ 435, 439 (1963). In the instant case, the reasons supporting the prima facie case of anticipation did put Chester on notice. The EIC specified exactly which claims read on exactly what prior art. The burden thus properly was shifted to Chester to rebut the prima facie case. Cf. King, 801 F.2d at 1327, 231 USPQ at 138.Chester did not produce any evidence that the '403 reference did not satisfy the written description and enablement requirements with respect to the anticipating subject matter so as to preclude the Board from finding that anticipation had been established by the preponderance of the evidenceBecause no convincing argument was presented to the Board that the limitations highlighted by Chester were not disclosed by the '403 reference, we conclude that the Board's finding that claim 17 was anticipated was not clearly erroneous. Because Chester failed to make any arguments as to how the Board clearly erred in rejecting claims 18-28 as anticipated, we affirm the Board's decision with respect to those claims as well.7

Talk:Bendix Corp. v. Balax, Inc. (full text)

2010-01-25T12:19:42Z

Kevin: /* Kevin */

== Maura ==
Before trial, plaintiff withdrew its patent No. 2,991,491, admitting its invalidity due to plaintiff's own prior public use. The trial court held plaintiff's Patent Re. 24,572 valid and infringed; it held plaintiff's Patent No. 3,050,755 infringed but invalid for prior public use by plaintiff; it dismissed that portion of the complaint charging defendants with appropriation of plaintiff's trade secrets; it dismissed defendant Van Vleet as an individual defendant; it denied plaintiff's request for treble damages and attorneys' fees; and it dismissed defendants' antitrust counterclaim.

Their first contention is that it is anticipated by the 1939 German Gebrauchsmuster Patent 1,455,626 (GM). Section 102(b) of Title 35, U.S.C.A. provides: 'A person shall be entitled to a patent unless-- * * * (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *.' 11
A GM is clearly a patent within the meaning of this section, but it is not a printed publication.

On this basis, all parties agree that only that which is 'patented' by a GM may be considered as prior art under Section 102(b), supra. Subject matter which is ancillary to, but not a part of, the patented subject matter may not be considered.

The Reeves court had said: '* * * for anticipation purposes under Section 102 a GM * * * is a reference only for what is patented, i.e., for what it claims and not, for what is disclosed in its specifications.' 282 F.Supp. at 136. 14

However, the Reeves court clearly recognized that an article patent may in some cases anticipate a process. Such would be the case where 'a process in one patent can produce only one article and that article is definitely covered by what is claimed in another patent (e.g., in an earlier GM) * * *. But this alone may not be sufficient to treat the article patent as an anticipation of the process patent, if many processes are described in the article patent while only one specific process is described in the process patent.' 282 F.Supp. at 136-137. 16

We conclude that the specifications of a GM may be resorted to for the purpose of clarifying the meaning of the language used in the claims, but may not be resorted to for the purpose of adding completely new material to that which is disclosed by the claims. 18

The specifications of the GM may be resorted to if necessary to clarify the meaning of the words of the claim-- to determine what it is that the claims 'patent' but not to add to what they patent. 20

The advisory explanations accompanying the German Regulations regarding 'the application for Gebrauchsmuster' provide: 29
'Indication of Novelty. 30
According to sec. 2 paragraph 2 of the statute, the application must specify 'what purpose of work, or utility, the new form or device is intended to serve.' Since this indication is of importance for the range of the legal protection corresponding with the recording, applicant will do well in many cases, even tho the law does not prescribe the setting of a protection claim, to summarize separately from the description, in the type of construction of a patent claim, the legally protectable characteristics of the model.' Patents and Gebrauchsmuster in International Law, Emerson Stringham, Pacot Publications, Madison, Wisconsin, 1935, p. 248.
Stringham comments: 31
'Scope of protection involves much the same problems which arise everywhere in patent law. The German statute requires no claim for Gebrauchsmuster. The tendency, during a decade or so, of the Reichsgericht to hold itself not bound by the statutory claim of the long-term patent, finds freer play with Gebrauchsmuster; * * *.' Id. at 255. 32

Thus we conclude that all claims of the plaintiff's reissue patent can be found in the Gebrauchsmuster Patent 1,455,626 which was issued more than one year prior to plaintiff's application for its patent. We hold that the claims of plaintiff's Patent Re. 24,572 are invalid because of anticipation by the 1939 GM. 38

Consistent with its interpretation of the GM for purposes of anticipation, it held that only the claims of the GM could be referred to on the obviousness issue.

Defendants urged several other grounds for the invalidity of the reissue patent in the trial court. All were rejected. Among these grounds were contentions that the reissue patent was anticipated by certain German literature and by various sales of taps in this country and that the reissue was obvious in light of the prior art taught by such literature and earlier tools. Since we have concluded that the reissue patent is invalid under the GM prior art, we need not reach these other contentions.
PATENT RE 24,572-- INFRINGEMENT 40
Since we have concluded that the reissue patent is invalid, it follows that the district court's determination that defendants' tap infringes it must be reversed. An invalid patent cannot be infringed.

The district court held plaintiff's '755 method patent invalid for plaintiff's own sales and the consequent public use more than one year prior to the application for patent. 35 U.S.C.A. 102(b), supra. It found that when plaintiff's tap is used in the recommended manner, it inherently practices the '755 method. Plaintiff's taps were on sale and in public use in June, 1956. The application which resulted in the '755 patent was not filed until July 23, 1958. 44

It claims the earlier filing date by virtue of 35 U.S.C.A. 1203 which provides that an application for an invention shall have the benefit of the filing date of an earlier application under certain circumstances. 45
To come within the purview of Section 120, the later application must 1) disclose an invention disclosed in the manner provided in 35 U.S.C.A. 112 in an earlier application; 2) be by the same inventor; 3) be filed before the patenting of the earlier application; and 4) contain a specific reference to the earlier application. Technicon Instruments Corp. v. Coleman Instruments Corp., 7 Cir., 385 F.2d 391, 393 (1967). 46
The district court found the first condition was not satisfied in the instant case for the reason that the earlier application did not disclose the invention in the manner required by Section 112, which, in relevant part, provides: 'The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.' 47

However, these cases do not support plaintiff's contention that the '755 patent is entitled to the filing date of the first filed tap application. They deal with a basically different situation. They are relevant when explanatory material is added to a pending application to clarify the invention claimed in such application. Typically they deal with amendments to applications which have been rejected under 35 U.S.C.A. 132.5 That section provides for reexamination of applications after amendment but states: 'No amendment shall introduce new matter into the disclosure of the invention.' 50

We hold that plaintiff's Patent No. 3,050,755 is invalid by reason of its prior public use and plaintiff's sales in June, 1956.

DEFENDANTS' COUNTERCLAIM-- ALLEGED ANTITRUST VIOLATIONS 59
Defendants' counterclaim to plaintiff's infringement suit charges two violations of federal antitrust laws. First, defendants contend that plaintiff violated Section 2 of the Sherman Act by 'illegal procurement and enforcement of patents.' They rely upon Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965). That reliance is misplaced in this case. Walker decided a purely legal issue, as the following passages from the opinion indicate: 60
'We have concluded that the enforcement of a patent procured by fraud on the Patent Office may be violative of 2 of the Sherman Act provided the other elements necessary to a 2 case are present. (Id. at 174, 86 S.Ct. at 349.) 61

Thus to prevail here, defendants must prove, what was assumed as true in Walker, that any misstatements by plaintiff in its patent applications were the products of intentional fraud and not good faith mistake.

Defendants next urge that even if all of plaintiff's patents were valid, plaintiff would be guilty of violations of Sections 1 and 2 of the Sherman Act for the reason that they have misused their patents to extend the patent monopoly beyond the scope permitted by the Constitution and the Congress. 67

'The owner of a patent cannot extend his statutory grant by contract or agreement. A patent affords no immunity for a monopoly not fairly or plainly within the grant. * * * It will not do to say that since the patentee has the power to refuse a license, he has the lesser power to license on his own conditions.'

The district court found no merit in this claim saying, inter alia, '* * * there has been no sufficient showing of an illegal combination to restrain trade. By dint of its valid patent Re. 24,572, the plaintiffs were entitled to the limited protection afforded under the patent laws. This included the right to license others to manufacture the patented tap. It is inappropriate to denominate this conduct as 'conspiratory' or 'monopolistic'.' 69

While it is true that a valid patent does afford some 'limited protection,' including 'the right to license others to manufacture the patented tap,' this is no answer to the thrust of defendants' contention that the licensor may not thereby forever preclude the licensee from challenging the validity of the patent. By requiring such a condition in the license or sales agreement, plaintiff may have placed itself in the position of unlawfully exceeding the protected area. 71

From all this we can only conclude that the right to estop licensees from challenging a patent is not part of the 'limited protection' afforded by the patent monopoly. Furthermore, the reason is that it creates a danger of unwarranted monopolization. Such danger may be even greater here than in the usual licensee-estoppel case for the reason that in the instant case the licensor sought to create an irrevocable estoppel, not one merely extending during the life of the licenses and sales agreements. 75

It concluded that while the information disclosed by plaintiff constituted trade secrets, no confidential relationship existed between the parties. Such a relationship is required to state a cause of action under Wisconsin law. Abbott Laboratories v. Norse Chemical Corp., 33 Wis.2d 445, 147 N.W.2d 529 (1967). 78

In No. 17343, that part of the judgment of the district court holding Patent Re. 24,572 to be valid and infringed is reversed; that part of the judgment dismissing defendants' antitrust counterclaim is vacated and set aside and this cause is ordered remanded to the district court for a reconsideration of such counterclaim; and defendants' claim for attorneys' fees is denied. 83
In No. 17344, the judgment of the district court is affirmed. 84 Reversed in part. Vacated in part and remanded. Affirmed in part. 1

Gebrauchsmuster is registered under the German law after an application filed in the German Patent Office. If the application meets the requirements of form and content, the GM is issued without any novelty search and is accompanied by the publication of an official notice in the German Official Gazette that it has been so issued. There is no requirement of nonobviousness in order to obtain a GM, and its purpose is to enable the applicant to obtain a speedy protection for a new article and if desirable, to concurrently seek a regular patent, a procedure which would consume much more time. After registration the specifications and claims become available to the public and anyone has free and open access to the same. The GM was not a printed publication at any time and is referred to as a utility model. It is limited to a maximum of six years instead of eighteen years, covers only articles and never can cover processes as such, and grants to the inventor the exclusive right to prevent others from making, using or selling his article and also to recover damages for any infringement. * * *

'By a directive issued to its examiners in 1965, the United States Patent Office resolved certain prior inconsistent practices as to the treatment of GMs and stated that GMs may be considered as patents for anticipation purposes within the purview of Section 102. Official Gazette of the United States Patent Office, Nov. 2, 1965, Vol. 820, No. 1.' 2

== Courtney ==

Since we have concluded that the reissue patent is invalid, it follows that the district court's determination that defendants' tap infringes it must be reversed. An invalid patent cannot be infringed. Scovill Mfg. Co. v. Goldblatt Bros., Inc., 7 Cir., 362 F.2d 777, 781 and cases cited therein. 41

We note, however, that had we found the reissue patent valid, the finding of infringement would have been affirmed. The district court found infringement under the doctrine of equivalents. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). The finding of equivalency is one of fact and will not be set aside unless clearly erroneous within the meaning of Rule 52(a), Federal Rules of Civil Procedure. Graver Tank, supra at 609-610, 70 S.Ct. 854. We conclude that the finding here is supported by the record and defendants do not seriously contend that it is not. 42

The district court specifically found that defendants had not met their burden of proving fraud on the patent office by clear and convincing evidence as required in Armour & Co. v. Wilson & Co., 7 Cir., 274 F.2d 143, 148 (1960). Our examination of the record leads us to conclude that such finding is not clearly erroneous and thus we accept it. Accordingly, the conclusion of the district court that this claim of antitrust violation is without merit should be approved. 66

While it is true that a valid patent does afford some 'limited protection,' including 'the right to license others to manufacture the patented tap,' this is no answer to the thrust of defendants' contention that the licensor may not thereby forever preclude the licensee from challenging the validity of the patent. By requiring such a condition in the license or sales agreement, plaintiff may have placed itself in the position of unlawfully exceeding the protected area. 71

Further, subsequent to the judgment of the district court under consideration here, the Supreme Court in Lear, Inc. v. Adkins, 395 U.S. 653 (June 16, 1969), at 668-671, 89 S.Ct. 1902, 23 L.Ed.2d 610, overruled the holding of Automatic Radio Manufacturing Co., Inc. v. Hazeltine Research, Inc., 339 U.S. 827, 836, 70 S.Ct. 894, 94 L.Ed. 1312 (1950), insofar as it invoked a legally implied estoppel to deny a licensee the right to challenge the validity of his licensor's patent in a suit for the collection of royalties. The Court's decision is rationalized almost exclusively in terms of 'the strong federal policy favoring free competition in ideas which do not merit patent protection.' Id. 395 U.S. at 656, 89 S.Ct. at 1904. 72

The Court concluded that even a good-faith patentee-licensor should not be given the benefit of the estoppel doctrine since even in such cases the strong public policy reflected in the 'federal law (that) requires that all ideas in general circulation be dedicated to the common good unless they are protected by a valid patent' overrides the equities of the licensor. The Court said: 'Surely the equities of the licensor do not weigh very heavily when they are balanced against the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor's discovery. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification.' Id. at 670, 89 S.Ct. at 1911. 73

The Court then went on to hold that the licensee would not be required to pay royalties accruing before an adjudication of invalidity even though that is what the express contract of the parties provided. Again the Court found such a result might frustrate federal policies favoring free competition. Id. at 673-674, 89 S.Ct. 1902. 74

== Kevin ==

Plaintiff's predecessor brought this action charging defendants with infringement of three of its patents and with appropriation of its trade secrets. Defendants counterclaimed charging plantiff with violations of the antitrust laws. 2
Before trial, plaintiff withdrew its patent No. 2,991,491, admitting its invalidity due to plaintiff's own prior public use. The trial court held plaintiff's Patent Re. 24,572 valid and infringed; it held plaintiff's Patent No. 3,050,755 infringed but invalid for prior public use by plaintiff; it dismissed that portion of the complaint charging defendants with appropriation of plaintiff's trade secrets; it dismissed defendant Van Vleet as an individual defendant; it denied plaintiff's request for treble damages and attorneys' fees; and it dismissed defendants' antitrust counterclaim. 4
In No. 17343, defendant appeal from those parts of the judgment herein holding Patent Re. 24,572 valid and infringed and denying relief to defendants on their counterclaim charging plaintiff with violations of the antitrust laws. Affirmatively, defendants seek an award of attorneys' fees, a decree finding plaintiff in violation of the Sherman Act and a remand to determine damages allegedly suffered by defendants. 5
In No. 17344, plaintiff appeals from those parts of the judgment herein holding its Patent No. 3,050,755 invalid; dismissing that part of the complaint charging defendants with appropriation of its trade secrets; dismissing Van Vleet as an individual defendant; and denying plaintiff's request for treble damages and attorneys' fees. 6
The two remaining patents involved in this litigation both relate to a device known as a fluteless swaging tap. Patent Re. 24,572, hereinafter referred to as the reissue patent, covers the tool itself. Patent 3,050,755, hereinafter referred to as the '755 or method patent, covers the method performed by the tool. 7Defendants urge several reasons for the invalidity of the reissue patent. Their first contention is that it is anticipated by the 1939 German Gebrauchsmuster Patent 1,455,626 (GM). Section 102(b) of Title 35, U.S.C.A. provides: 'A person shall be entitled to a patent unless-- * * * (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *.' 11
A GM is clearly a patent within the meaning of this section, but it is not a printed publication. American Infra-Red Radiant Co. v. Lambert Industries, Inc., 8 Cir., 360 F.2d 977, 991-994, cert. denied, 385 U.S. 920, 87 S.Ct. 233, 17 L.Ed.2d 144 (1966); Permutit Co. v. Wadham, 6 Cir., 13 F.2d 454, 458 (1926); Reeves Bros., Inc. v. United States Laminating Corp., 282 F.Supp. 118, 134-136 (E.D.N.Y.1968); Permutit Co. v. Graver Corp., 37 F.2d 385, 390 (N.D.Ill.1930), aff'd on other grounds, 7 Cir.,43 F.2d 898, 902 (1930), aff'd 284 U.S. 52, 52 S.Ct. 53, 76 L.Ed. 163 (1931); and Safety Gas Lighter Co. v. Fischer Bros. & Corwin, 236 F. 955, 962 (D.N.J.1916), aff'd, 3 Cir., 247 F. 1005, 159 C.C.A. 652 (1918).1 12
On this basis, all parties agree that only that which is 'patented' by a GM may be considered as prior art under Section 102(b), supra. Subject matter which is ancillary to, but not a part of, the patented subject matter may not be considered. The district court so held. The disagreement between the parties concerns the method of determining what is 'patented' by the Gebrauchsmuster in question. 13
The trial court held that a GM 'patents' only that which is disclosed by the bare words of its claims. It relied on language in Reeves, supra, in holding that it is never permissible to look to the specifications of a GM in construing its claims. The Reeves court had said: '* * * for anticipation purposes under Section 102 a GM * * * is a reference only for what is patented, i.e., for what it claims and not, for what is disclosed in its specifications.' 282 F.Supp. at 136. 14
Defendants maintain that the claims of a GM are to be construed in light of its specifications and seek to distinguish Reeves. They note that in Reeves a GM was cited as a reference against a process patent and that a GM is by definition a patent only on an article and never on a process. From this they conclude the Reeves court ignored the specifications only because they referred to a process. 15
However, the Reeves court clearly recognized that an article patent may in some cases anticipate a process. Such would be the case where 'a process in one patent can produce only one article and that article is definitely covered by what is claimed in another patent (e.g., in an earlier GM) * * *. But this alone may not be sufficient to treat the article patent as an anticipation of the process patent, if many processes are described in the article patent while only one specific process is described in the process patent.' 282 F.Supp. at 136-137. 16
For example, in Reeves the GM claims disclosed an article which could have been produced by several processes. The court had held that in such a case the article patent could not anticipate any one of those processes when cited against a patent specifically claiming one of them. Therefore, resort to the specifications there to learn in what manner the claimed article was actually produced would have added wholly new matter to the claims. Without the specifications, the Reeves claims could anticipate no process, but with them, the claims would anticipate a process as well as an article. Reeves was thus a particularly clear case of specifications adding new matter to what was 'patented' by the claims, rather than simply giving meaning to the words of the claims for the purpose of determining what was 'patented' by them. 19
Each case will, of course, turn on its own facts. In each case the question will be 'What is 'patented'? ' The specifications of the GM may be resorted to if necessary to clarify the meaning of the words of the claim-- to determine what it is that the claims 'patent' but not to add to what they patent. 20
Thus, the double question here is whether resort to the specifications is necessary to determine what is patented and whether such resort may be taken without increasing the scope of what is patented. These claims make clear that what is patented is a swaging tap, i.e., a 'tap for the chipless production of inner threads.' They also make clear that the patented tap is of a particular form and shape-- one 'characterized by the shape, disposition and arrangement reflected by the drawing and the specification.' However, by this cross reference, the words of the claims leave unclear exactly what the 'shape, disposition and arrangement' of the patented article is meant to be. Thus, it is plainly necessary in this case to resort to the specifications to determine what is 'patented' by the claims. 25The trial court completely disregarded Claim 2. It reasoned that to give it any effect would undermine its conclusion as to the proper construction of a Gebrauchsmuster: 'Claim 1 is the only real claim of the GM. Claim 2 incorporates by cross reference 'the shape, disposition and arrangement reflected by the drawing and the specification.' However, to allow such a cross reference would defeat the limited use which this court has concluded must be made of the GM.' 27
We do not agree that allowing the obviously intended cross reference to the specifications here defeats the limitations to which Gebrauchsmusters are admittedly subject. We allow such cross reference not to increase the scope of what is patented by the Gebrauchsmuster claims but only to accomplish the task at hand of determining what it is that those claims patent. 'Indication of Novelty. 30
According to sec. 2 paragraph 2 of the statute, the application must specify 'what purpose of work, or utility, the new form or device is intended to serve.' Since this indication is of importance for the range of the legal protection corresponding with the recording, applicant will do well in many cases, even tho the law does not prescribe the setting of a protection claim, to summarize separately from the description, in the type of construction of a patent claim, the legally protectable characteristics of the model.' Patents and Gebrauchsmuster in International Law, Emerson Stringham, Pacot Publications, Madison, Wisconsin, 1935, p. 248.
Stringham comments: 31
'Scope of protection involves much the same problems which arise everywhere in patent law. The German statute requires no claim for Gebrauchsmuster. The tendency, during a decade or so, of the Reichsgericht to hold itself not bound by the statutory claim of the long-term patent, finds freer play with Gebrauchsmuster; * * *.' Id. at 255. 32
Having concluded that what is patented by Gebrauchsmuster Patent 1,455,626 should have been determined by construing its claims in the light of its specifications rather than on the bare words of the claims, it becomes necessary to determine whether that patent, properly construed, does anticipate, and thus invalidate, plaintiff's Patent Re. 24,572 in suit. 33
Thus we conclude that all claims of the plaintiff's reissue patent can be found in the Gebrauchsmuster Patent 1,455,626 which was issued more than one year prior to plaintiff's application for its patent. We hold that the claims of plaintiff's Patent Re. 24,572 are invalid because of anticipation by the 1939 GM. 38
The district court also erred in concluding that the reissue patent was not invalid for obviousness in view of the prior art under 35 U.S.C.A. 103.2 This error resulted from the court's error of law as to the interpretation of the Gebrauchsmuster. Consistent with its interpretation of the GM for purposes of anticipation, it held that only the claims of the GM could be referred to on the obviousness issue. We have held that, on the facts of this case, the specifications as well as the claims are part of the prior art. In view of this prior art, we hold that the reissue patent is also invalid under Section 103. 39
Defendants urged several other grounds for the invalidity of the reissue patent in the trial court. All were rejected. Among these grounds were contentions that the reissue patent was anticipated by certain German literature and by various sales of taps in this country and that the reissue was obvious in light of the prior art taught by such literature and earlier tools. Since we have concluded that the reissue patent is invalid under the GM prior art, we need not reach these other contentions.
PATENT RE 24,572-- INFRINGEMENT 40
Since we have concluded that the reissue patent is invalid, it follows that the district court's determination that defendants' tap infringes it must be reversed. An invalid patent cannot be infringed. Scovill Mfg. Co. v. Goldblatt Bros., Inc., 7 Cir., 362 F.2d 777, 781 and cases cited therein. 41The district court held plaintiff's '755 method patent invalid for plaintiff's own sales and the consequent public use more than one year prior to the application for patent. 35 U.S.C.A. 102(b), supra. It found that when plaintiff's tap is used in the recommended manner, it inherently practices the '755 method. Plaintiff's taps were on sale and in public use in June, 1956. The application which resulted in the '755 patent was not filed until July 23, 1958. 44
Plaintiff concedes that 'the District Court's holding of invalidity of the '755 patent because of such sales * * * is correct, unless the '755 patent is entitled to the April 3, 1956 filing date of the first filed swaging tap application.' It claims the earlier filing date by virtue of 35 U.S.C.A. 1203 which provides that an application for an invention shall have the benefit of the filing date of an earlier application under certain circumstances. 45
To come within the purview of Section 120, the later application must 1) disclose an invention disclosed in the manner provided in 35 U.S.C.A. 112 in an earlier application; 2) be by the same inventor; 3) be filed before the patenting of the earlier application; and 4) contain a specific reference to the earlier application. Technicon Instruments Corp. v. Coleman Instruments Corp., 7 Cir., 385 F.2d 391, 393 (1967). 46
The district court found the first condition was not satisfied in the instant case for the reason that the earlier application did not disclose the invention in the manner required by Section 112, which, in relevant part, provides: 'The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.' 47
The disclosure of the method invention in the first filed swaging tap application of April, 1956, consisted of a single paragraph which contained essentially a description of how the tap was to be used rather than a description of a method of forming threads. This method was set out in detail for the first time in the 1958 method patent application and covered seven paragraphs in addition to the one contained in the 1956 application. The district court held that when these descriptions are compared, 'it becomes reasonably clear that the disclosure of the original patent does not satisfy the requirements of 112.' 48
Plaintiff, however, asserts that the earlier application did disclose the method for the reason that 'the mere disclosure of a device which inherently performs a function in a patent application also by necessity discloses that function * * *.' It relies mainly on Technicon Instruments Corp. v. Coleman Instruments, Inc., 255 F.Supp. 630, 640-641 (N.D.Ill.1966), aff'd., 7 Cir., 385 F.2d 391, 393 (1967). Other cases may be cited for this same general proposition.4 49
However, these cases do not support plaintiff's contention that the '755 patent is entitled to the filing date of the first filed tap application.In essence, the issue under consideration in the instant case is whether there was adequate disclosure in the original tool application to support the separate and distinct method invention. Here plaintiff does not seek merely the right to clarify overly broad or ambiguous claims. Rather, it seeks to use the concept of 'inherent disclosure' in a manner which will result in extending its monopoly beyond the limits of the originally claimed invention. 51
We conclude, under the record before us, that the inherent disclosure relied upon by plaintiff is not adequate to meet the disclosure requirements of Section 112, supra. It necessarily follows that the requirements of Section 120, supra, have not been met. 52
Accordingly, we hold the finding of the district court that plaintiff's method patent is not entitled to the April, 1956, filing date of the first filed swaging tap application is not clearly erroneous. We hold that plaintiff's Patent No. 3,050,755 is invalid by reason of its prior public use and plaintiff's sales in June, 1956.The district court held that defendants were incorrectly interpreting the language of the claim. It held that when the claims were read in light of the specifications, they meant 'that the pressure areas in the cylindrical section are equal in size and in pressure-applying ability as the last lobe on the tapered section * * * not * * * that all the threads on the cylindrical section actually apply the same pressure as the last lobe on the tapered section.' We agree that this is the correct interpretation of the claim language. When the claims of the method patent are so interpreted, the court's finding of infringement by equivalency is not clearly erroneous. 58
DEFENDANTS' COUNTERCLAIM-- ALLEGED ANTITRUST VIOLATIONS 59
Defendants' counterclaim to plaintiff's infringement suit charges two violations of federal antitrust laws. First, defendants contend that plaintiff violated Section 2 of the Sherman Act by 'illegal procurement and enforcement of patents.' They rely upon Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965). That reliance is misplaced in this case. Walker decided a purely legal issue, as the following passages from the opinion indicate: 60
It is clear that the patent monopoly is one strictly limited and that contracts and agreements extending its scope may violate federal antitrust laws. United States v. Univis Lens Co., Inc., 316 U.S. 241, 250, 62 S.Ct. 1088, 86 L.Ed. 1408 (1942). As stated by the Supreme Court, United States v. Masonite Corp., 316 U.S. 265, 277, 62 S.Ct. 1070, 1077, 86 L.Ed. 1461 (1942): 'The owner of a patent cannot extend his statutory grant by contract or agreement. A patent affords no immunity for a monopoly not fairly or plainly within the grant. * * * It will not do to say that since the patentee has the power to refuse a license, he has the lesser power to license on his own conditions.'Defendants assert that plaintiff has 'blanketed' 75% Of the swaging tap market and 'smothered most competition' by means of sales and licensing agreements with its competitors. The licensing agreements give competitors the right to make and sell swaging taps. The sales agreements give other competitors the right to buy taps and to become licensees at their option. Each agreement contains irrevocable covenants binding the purchaser or licensee never to contest the validity of plaintiff's patents, even if the agreement is terminated. Defendants contend that this network effectively excludes them from 75% Of the swaging tap market because no swaging tap user bound not to contest the validity of plaintiff's taps can afford to risk the possibility of an infringement suit by buying swaging taps from defendants. 68
The district court found no merit in this claim saying, inter alia, '* * * there has been no sufficient showing of an illegal combination to restrain trade. By dint of its valid patent Re. 24,572, the plaintiffs were entitled to the limited protection afforded under the patent laws. This included the right to license others to manufacture the patented tap. It is inappropriate to denominate this conduct as 'conspiratory' or 'monopolistic'.' 69While it is true that a valid patent does afford some 'limited protection,' including 'the right to license others to manufacture the patented tap,' this is no answer to the thrust of defendants' contention that the licensor may not thereby forever preclude the licensee from challenging the validity of the patent. By requiring such a condition in the license or sales agreement, plaintiff may have placed itself in the position of unlawfully exceeding the protected area. 71The Court concluded that even a good-faith patentee-licensor should not be given the benefit of the estoppel doctrine since even in such cases the strong public policy reflected in the 'federal law (that) requires that all ideas in general circulation be dedicated to the common good unless they are protected by a valid patent' overrides the equities of the licensor. The Court said: 'Surely the equities of the licensor do not weigh very heavily when they are balanced against the important public interest in permitting full and free competition in the use of ideas which are in reality a part of the public domain. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of an inventor's discovery. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification.' Id. at 670, 89 S.Ct. at 1911. From all this we can only conclude that the right to estop licensees from challenging a patent is not part of the 'limited protection' afforded by the patent monopoly. Furthermore, the reason is that it creates a danger of unwarranted monopolization. Such danger may be even greater here than in the usual licensee-estoppel case for the reason that in the instant case the licensor sought to create an irrevocable estoppel, not one merely extending during the life of the licenses and sales agreements. In light of our holding that Patent Re. 24,572 is invalid and the recent Supreme Court decision in Lear, we have concluded that the portion of the judgment below dismissing defendants' antitrust counterclaim should be vacated and the case remanded for reconsideration of that issue103. Conditions for patentability; non-obvious subject matter
'A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.' 3
'120. Benefit of earlier filing date in the United States
'An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application.' 'Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Commissioner shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and reference as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.'

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<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[http://www.supremecourtus.gov/opinions/05pdf/04-607.pdf]
[[LABORATORY CORPORATION OF AMERICA HOLD
INGS, DBA LABCORP, PETITIONER v. METABOLITE LABORATORIES, INC., ET AL:(full text). - added by kevin]]

[[LABORATORY CORPORATION OF AMERICA HOLD
INGS, DBA LABCORP, PETITIONER v. METABOLITE LABORATORIES, INC., ET AL.]]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

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Kevin: /* Inventor Eligibility */

<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[http://www.supremecourtus.gov/opinions/05pdf/04-607.pdf]
[[LABORATORY CORPORATION OF AMERICA HOLD
INGS, DBA LABCORP, PETITIONER v. METABOLITE LABORATORIES, INC., ET AL. - Kevin]]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

Main Page

2010-01-22T01:29:25Z

Kevin: /* Inventor Eligibility */

<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[http://www.supremecourtus.gov/opinions/05pdf/04-607.pdf]
[[LABORATORY CORPORATION OF AMERICA HOLD-
INGS, DBA LABCORP, PETITIONER v. METABO
-LITE LABORATORIES, INC., ET AL. - Kevin]]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

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Kevin: Created page with 'Cite as: 548 U. S. ____ (2006) Per Curiam NOTICE: This opinion is subject to formal revision before publication in thepreliminary print of the United States Reports. Readers are …'

Cite as: 548 U. S. ____ (2006)
Per Curiam
NOTICE: This opinion is subject to formal revision before publication in thepreliminary print of the United States Reports. Readers are requested tonotify the Reporter of Decisions, Supreme Court of the United States, Wash-ington, D. C. 20543, of any typographical or other formal errors, in orderthat corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
No. 04–607
LABORATORY CORPORATION OF AMERICA HOLD-
INGS, DBA LABCORP, PETITIONER v. METABO
-LITE LABORATORIES, INC., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 22, 2006]
PER CURIAM. The writ of certiorari is dismissed as improvidentlygranted.
THE CHIEF JUSTICE took no part in the consideration or decision of this case.
_________________
_________________
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Cite as: 548 U. S. ____ (2006)
BREYER, J., dissenting
SUPREME COURT OF THE UNITED STATES
No. 04–607
LABORATORY CORPORATION OF AMERICA HOLD-
INGS, DBA LABCORP, PETITIONER v. METABO
-LITE LABORATORIES, INC., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
[June 22, 2006]
JUSTICE BREYER, with whom JUSTICE STEVENS and JUSTICE SOUTER join, dissenting.
This case involves a patent that claims a process for helping to diagnose deficiencies of two vitamins, folate andcobalamin. The process consists of using any test (whether patented or unpatented) to measure the level ina body fluid of an amino acid called homocysteine and then noticing whether its level is elevated above the norm; if so, a vitamin deficiency is likely.
The lower courts held that the patent claim is valid.They also found the petitioner, Laboratory Corporation of America Holdings (LabCorp), liable for inducing infringe-ment of the claim when it encouraged doctors to order diagnostic tests for measuring homocysteine. The courts assessed damages. And they enjoined LabCorp from usingany tests that would lead the doctors it serves to find a vitamin deficiency by taking account of elevated homocys-teine levels.
We granted certiorari in this case to determine whetherthe patent claim is invalid on the ground that it improp-erly seeks to “claim a monopoly over a basic scientific relationship,” Pet. for Cert. i, namely, the relationshipbetween homocysteine and vitamin deficiency. The Court has dismissed the writ as improvidently granted. In my
2 LABORATORY CORP. OF AMERICA HOLDINGS v.
METABOLITE LABORATORIES, INC.
BREYER, J., dissenting
view, we should not dismiss the writ. The question pre-sented is not unusually difficult. We have the authority todecide it. We said that we would do so. The parties and amici have fully briefed the question. And those who en-gage in medical research, who practice medicine, and who aspatients depend upon proper health care, might well benefit from this Court’s authoritative answer.
I
A
The relevant principle of law “[e]xclude[s] from . . . patent protection . . . laws of nature, natural phenomena,and abstract ideas.” Diamond v. Diehr, 450 U. S. 175, 185 (1981). This principle finds its roots in both English and American law. See, e.g., Neilson v. Harford, Webster’s Patent Cases 295, 371 (1841); Le Roy v. Tatham, 14 How.
156. 175 (1853); O’Reilly v. Morse, 15 How. 62 (1854); The Telephone Cases, 126 U. S. 1 (1888). The principle means that Einstein could not have “patent[ed] his celebrated law that E=mc2; nor could Newton have patented the law ofgravity.” Diamond v. Chakrabarty, 447 U. S. 303, 309 (1980). Neither can one patent “a novel and usefulmathematical formula,” Parker v. Flook, 437 U. S. 584, 585 (1978), the motive power of electromagnetism or steam, Morse, supra, at 116, “the heat of the sun, electric-ity, or the qualities of metals,” Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127, 130 (1948).
The justification for the principle does not lie in anyclaim that “laws of nature” are obvious, or that their dis-covery is easy, or that they are not useful. To the con-trary, research into such matters may be costly and time-consuming; monetary incentives may matter; and thefruits of those incentives and that research may prove of great benefit to the human race. Rather, the reason for the exclusion is that sometimes too much patent protec-tion can impede rather than “promote the Progress of
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Cite as: 548 U. S. ____ (2006)
BREYER, J., dissenting
Science and useful Arts,” the constitutional objective ofpatent and copyright protection. U. S. Const., Art. I, §8,
cl. 8.
The problem arises from the fact that patents do not only encourage research by providing monetary incentivesfor invention. Sometimes their presence can discourageresearch by impeding the free exchange of information, for example by forcing researchers to avoid the use of poten-tially patented ideas, by leading them to conduct costlyand time-consuming searches of existing or pending pat-ents, by requiring complex licensing arrangements, and byraising the costs of using the patented information, some-times prohibitively so.
Patent law seeks to avoid the dangers of overprotection just as surely as it seeks to avoid the diminished incentive to invent that underprotection can threaten. One way inwhich patent law seeks to sail between these opposing and risky shoals is through rules that bring certain types ofinvention and discovery within the scope of patentability while excluding others. And scholars have noted that “patent law[’s] exclu[sion of] fundamental scientific (in-cluding mathematical) and technological principles,” (like copyright’s exclusion of “ideas”) is a rule of the lattervariety. W. Landes & R. Posner, The Economic Structure of Intellectual Property Law 305 (2003). That rule reflects “both . . . the enormous potential for rent seeking thatwould be created if property rights could be obtained in [those basic principles] and . . . the enormous transaction costs that would be imposed on would-be users.” Id., at 305–306; cf. Nichols v. Universal Pictures Corp., 45 F. 2d 119, 122 (CA2 1930) (L. Hand, J.).
Thus, the Court has recognized that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are . . . the basic tools of scientific and technological work.” Gottschalk v. Benson, 409 U. S. 63, 67 (1972). It has treated fundamental scien-
4 LABORATORY CORP. OF AMERICA HOLDINGS v.
METABOLITE LABORATORIES, INC.
BREYER, J., dissenting
tific principles as “part of the storehouse of knowledge”and manifestations of laws of nature as “free to all men and reserved exclusively to none.” Funk Bros., supra, at
130. And its doing so reflects a basic judgment that pro-tection in such cases, despite its potentially positive incen-tive effects, would too often severely interfere with, ordiscourage, development and the further spread of useful knowledge itself.
B In the 1980s three university doctors, after conductingresearch into vitamin deficiencies, found a correlation between high levels of homocysteine in the blood and deficiencies of two essential vitamins, folate (folic acid)and cobalamin (vitamin B12). They also developed moreaccurate methods for testing body fluids for homocysteine, using gas chromatography and mass spectrometry. They published their findings in 1985. They obtained a patent.And that patent eventually found its commercial way into the hands of Competitive Technologies, Inc. (CTI), and its licensee Metabolite Laboratories, Inc. (Metabolite), therespondents here.The patent contains several claims that cover the re-searchers’ new methods for testing homocysteine levelsusing gas chromatography and mass spectrometry. Supp. App. 30. In 1991, LabCorp (in fact, a corporate predeces-sor) took a license from Metabolite permitting it to use the tests described in the patent in return for 27.5% of related revenues. Their agreement permitted LabCorp to termi-nate the arrangement if “a more cost effective commercialalternative is available that does not infringe a valid and enforceable claim of” the patent. App. 305 (emphasis added).Until 1998, LabCorp used the patented tests and paidroyalties. By that time, however, growing recognition thatelevated homocysteine levels might predict risk of heart
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Cite as: 548 U. S. ____ (2006)
BREYER, J., dissenting
disease led to increased testing demand. Other companies began to produce alternative testing procedures. And LabCorp decided to use one of these other procedures—atest devised by Abbott Laboratories that LabCorp con-cluded was “far superior.” Id., at 167 (testimony of Peter Wentz).
LabCorp continued to pay royalties to respondentswhenever it used the patented tests. But it concluded that Abbott’s test did not fall within the patent’s protective scope. And LabCorp consequently refused to pay royalties when it used the Abbott test. Id., at 237 (payment elimi-nated due to “change in methodology”).
In response, respondents brought this suit againstLabCorp for patent infringement and breach of the license agreement. They did not claim that LabCorp’s use of the Abbott test infringed the patent’s claims describing meth-ods for testing for homocysteine. Instead, respondents relied on a broader claim not limited to those tests, namelyclaim 13, the sole claim at issue here. That claim—set forth below in its entirety—seeks patent protection for:
“A method for detecting a deficiency of cobalamin or
folate in warm-blooded animals comprising the steps
of:
“assaying a body fluid for an elevated level of total
homocysteine; and
“correlating an elevated level of total homocysteine
in said body fluid with a deficiency of cobalamin or
folate.” Supp. App. 30.
Claim 13, respondents argued, created a protected monopoly over the process of “correlating” test results and potential vitamin deficiencies. The parties agreed that thewords “assaying a body fluid” refer to the use of any test at all, whether patented or not patented, that determines whether a body fluid has an “elevated level of total homo-cysteine.” And at trial, the inventors testified that claim
6 LABORATORY CORP. OF AMERICA HOLDINGS v.
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13’s “correlating” step consists simply of a physician’s recognizing that a test that shows an elevated homocys-teine level—by that very fact—shows the patient likelyhas a cobalamin or folate deficiency. App. 108–111 (testi-mony of Dr. Sally Stabler); id., at 131–148 (testimony of Robert Allen). They added that, because the naturalrelationship between homocysteine and vitamin deficiency was now well known, such “correlating” would occurautomatically in the mind of any competent physician. Id., at 137–138 (same).
On this understanding of the claim, respondents argued,LabCorp was liable for inducing doctors to infringe. More specifically, LabCorp would conduct homocysteine tests and report the results measured in micromoles (millionthsof a mole) per liter (symbolized μmol/L). Doctors, because of their training, would know that a normal homocysteinerange in blood is between 7 and 22 μmol/L (and in urine between 1 and 20 μmol/L), Supp. App. 14, and would knowthat an elevated homocysteine level is correlated with avitamin deficiency. Hence, in reviewing the test results,doctors would look at the μmol/L measure and automati-cally reach a conclusion about whether or not a person was suffering from a vitamin deficiency. Claim 13 therefore covered every homocysteine test that a doctor reviewed.And since LabCorp had advertised its tests and educated doctors about the correlation, LabCorp should be liable for actively inducing the doctors’ infringing acts. See 35
U. S. C. §271(b).
The jury found LabCorp liable on this theory. The District Court calculated damages based on unpaid royal-ties for some 350,000 homocysteine tests performed by LabCorp using the Abbott method. The court also en-joined LabCorp from performing “any homocysteine-onlytest, including, without limitation homocysteine-only tests via the Abbott method.” App. to Pet. for Cert. 36a–37a (internal quotation marks omitted).
7
Cite as: 548 U. S. ____ (2006) BREYER, J., dissenting
LabCorp appealed. It argued to the Federal Circuit thatthe trial court was wrong to construe claim 13 so broadly that infringement took place “every time a physician does nothing more than look at a patient’s homocysteine level.” Corrected Brief for Appellant in No. 03–1120 (CA Fed.),
p. 28 (hereinafter Brief for Appellant). Indeed, if so con-strued (rather than construed, say, to cover only patentedtests), then claim 13 was “invalid for indefiniteness, lack of written description, non-enablement, anticipation,and obviousness.” Id., at 38. LabCorp told the Federal Circuit:
“If the Court were to uphold this vague claim, anyone could obtain a patent on any scientific correlation—that there is a link between fact A and fact B—merely by drafting a patent claiming no more than ‘test forfact A and correlate with fact B’ . . . . Claim 13 does no more than that. If it is upheld, CTI would improp-erly gain a monopoly over a basic scientific fact ratherthan any novel invention of its own. The law is set-tled that no such claim should be allowed. See, e.g., Diamond v. Diehr, 450 U. S. 175 (1981); . . . Chisum on Patents §1.03[6].” Id., at 41.
The Federal Circuit rejected LabCorp’s arguments. It agreed with the District Court that claim 13’s “correlating”step simply means “relating total homocysteine levels to cobalamin or folate deficiency, a deficiency in both, or a deficiency in neither.” 370 F. 3d 1354, 1363 (2004). That meaning, it said, is “discernable and clear”; it is definite, it is described in writing, and it would enable virtually anyone to follow the instruction it gives. And that is sufficient. Id., at 1366–1367. The Court did not address LabCorp’s argument that, if so construed, claim 13 must be struck down as an improper effort to obtain patentprotection for a law of nature.
Moreover, the Circuit concluded, because any competent
8 LABORATORY CORP. OF AMERICA HOLDINGS v.
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BREYER, J., dissenting
doctor reviewing test results would automatically correlatethose results with the presence or absence of a vitamindeficiency, virtually every doctor who ordered and read thetests was a direct infringer. And because LabCorp “pub-lishes . . . Continuing Medical Education articles” and other pieces, which urge doctors to conduct the relevanttests and to reach a conclusion about whether a patient is suffering from a vitamin deficiency based upon the test results, LabCorp induces infringement. Id., at 1365. Finally, the court rejected LabCorp’s challenge to the injunction. Id., at 1372.
LabCorp filed a petition for certiorari. Question Three of the petition asks “[w]hether a method patent . . . direct-ing a party simply to ‘correlate’ test results can validlyclaim a monopoly over a basic scientific relationship . . .such that any doctor necessarily infringes the patentmerely by thinking about the relationship after looking at a test result.” Pet. for Cert. i. After calling for and receiv-ing the views of the Solicitor General, 543 U. S. 1185(2005), we granted the petition, limited to Question Three.
II The question before us is whether claim 13, as construedand applied in the way I have described in Part I–B, isinvalid in light of the “law of nature” principle, described in Part I–A. I believe that we should answer that ques-tion. There is a technical procedural reason for not doingso, namely, that LabCorp did not refer in the lower courtsto §101 of the Patent Act, which sets forth subject matter that is patentable, and within the bounds of which the “law of nature” principle most comfortably fits. See 35
U. S. C. §101 (patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter”); Flook, 437 U. S., at 588–589. There is also a practical reason for not doing so, namely, that we might benefit from the views of the Federal Circuit, which did
9
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BREYER, J., dissenting
not directly consider the question. See, e.g., United States
v. Bestfoods, 524 U. S. 51, 72–73 (1998).
Nonetheless, stronger considerations argue for our reaching a decision. For one thing, the technical proce-dural objection is tenuous. LabCorp argued the essence of its present claim below. It told the Federal Circuit that claim 13 as construed by the District Court was too “vague” because that construction would allow “anyone” to “obtain a patent on any scientific correlation;” it wouldpermit the respondents “improperly [to] gain a monopolyover a basic scientific fact” despite “settled” law “that nosuch claim should be allowed.” Brief for Appellant 41 (citing Diehr, 450 U. S., at 1185; 1 D. Chisum, Patents §1.03[6]) (2006 ed.) (hereinafter Chisum). LabCorp explic-itly stated in its petition for certiorari that, “if the Courtallows the Federal Circuit opinion to stand . . . [respon-dents] would improperly gain monopolies over basic scien-tific facts rather than any novel inventions of their own.” Pet. for Cert. 25 (citing Diehr, supra; Gottschalk, 409 U. S. 63; Funk Bros., 333 U. S. 127; Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86 (1939)). And after considering the Solicitor General’s advice not to hearthe case (primarily based upon LabCorp’s failure to referto 35 U. S. C. §101), we rejected that advice, thereby “nec-essarily consider[ing] and reject[ing] that contention as abasis for denying review.” United States v. Williams, 504
U. S. 36, 40 (1992).
For another thing, I can find no good practical reason forrefusing to decide the case. The relevant issue has been fully briefed and argued by the parties, the Government,and 20 amici. The record is comprehensive, allowing us tolearn the precise nature of the patent claim, to consider the commercial and medical context (which the parties and amici have described in detail), and to become famil-iar with the arguments made in all courts. Neither the factual record nor the briefing suffers from any
10 LABORATORY CORP. OF AMERICA HOLDINGS v.
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BREYER, J., dissenting
significant gap. No party has identified any prejudice due to our answering the question. And there is no indication that LabCorp’s failure to cite §101 reflected unfair gamesmanship.
Of course, further consideration by the Federal Circuitmight help us reach a better decision. Lower court consid-eration almost always helps. But the thoroughness of the briefing leads me to conclude that the extra time, cost, anduncertainty that further proceedings would engender arenot worth the potential benefit.
Finally, I believe that important considerations of thepublic interest—including that of clarifying the law in thisarea sooner rather than later—argue strongly for our deciding the question presented now. See Part IV, infra.
III I turn to the merits. The researchers who obtained the present patent found that an elevated level of homocys-teine in a warm-blooded animal is correlated with folate and cobalamin deficiencies. As construed by the FederalCircuit, claim 13 provides those researchers with controlover doctors’ efforts to use that correlation to diagnose vitamin deficiencies in a patient. Does the law permitsuch protection or does claim 13, in the circumstances, amount to an invalid effort to patent a “phenomenon ofnature”? I concede that the category of non-patentable “phenom-ena of nature,” like the categories of “mental processes,” and “abstract intellectual concepts,” is not easy to define. See Flook, supra, at 589 (“The line between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear”); cf. Nichols, 45 F. 2d, at 122 (“[W]e are as aware asanyone that the line [between copyrighted material and non-copyrightable ideas], wherever it is drawn, will seem arbitrary”). After all, many a patentable invention restsupon its inventor’s knowledge of natural phenomena;
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many “process” patents seek to make abstract intellectualconcepts workably concrete; and all conscious humanaction involves a mental process. See generally 1 Chisum§1.03, at 78–295. Nor can one easily use such abstract categories directly to distinguish instances of likely benefi-cial, from likely harmful, forms of protection. Cf. FTC, To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy, ch. 3, p. 1 (Oct. 2003) (herein-after FTC) (collecting evidence that “issues of fixed cost recovery, alternative appropriability mechanisms, and relationships between initial and follow-on innovation” vary by industry); Burk & Lemley, Policy Levers in PatentLaw, 89 Va. L. Rev. 1575, 1577–1589 (2003) (“Recent evidence has demonstrated that this complex relationship[between patents and innovation] is . . . industry-specific at each stage of the patent process”).
But this case is not at the boundary. It does not requireus to consider the precise scope of the “natural phenome-non” doctrine or any other difficult issue. In my view,claim 13 is invalid no matter how narrowly one reasonablyinterprets that doctrine.
There can be little doubt that the correlation between homocysteine and vitamin deficiency set forth in claim 13 is a “natural phenomenon.” That is what the petitioners argue. It is what the Solicitor General has told us. Brief for United States as Amicus Curiae 19 (filed Dec. 23, 2005) (“The natural relationship between elevated homocysteineand deficiencies in the B vitamins is an unpatentable ‘principle in natural philosophy or physical science’”)(quoting Morse, 15 How., at 116)). Indeed, it is close to what the respondents concede. Brief for Respondents 31(“The correlation between total homocysteine and deficien-cies in cobalamin and folate that the Inventors discovered could be considered, standing alone, a ‘natural phenome-non’ in the literal sense: It is an observable aspect of bio-chemistry in at least some human populations”).
12 LABORATORY CORP. OF AMERICA HOLDINGS v.
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The respondents argue, however, that the correlation isnonetheless patentable because claim 13 packages it inthe form of a “process” for detecting vitamin deficiency,with discrete testing and correlating steps. They point tothis Court’s statements that a “process is not unpatentablesimply because it contains a law of nature,” Flook, 437
U. S., at 590; see also Gottschalk, 409 U. S., at 67, and that “an application of a law of nature . . . to a known . .. process may well be deserving of patent protection.” Diehr, 450 U. S., at 187. They add that claim 13 is apatentable “application of a law of nature” because, con-sidered as a whole, it (1) “entails a physical transforma-tion of matter,” namely, the alteration of a blood sample during whatever test is used, Brief for Respondents 33 (citing Cochrane v. Deener, 94 U. S. 780, 788 (1877); Gottschalk, supra, at 70), and because it (2) “produces a‘useful, concrete, and tangible result,’” namely, detection of a vitamin deficiency, Brief for Respondents 36 (citing State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA Fed 1998)).
In my view, however, the cases to which respondents refer do not support their claim. Neither Cochrane nor Gottschalk can help them because the process described inclaim 13 is not a process for transforming blood or any other matter. Claim 13’s process instructs the user to (1)obtain test results and (2) think about them. Why shouldit matter if the test results themselves were obtained through an unpatented procedure that involved the trans-formation of blood? Claim 13 is indifferent to that fact, for it tells the user to use any test at all. Indeed, to use virtu-ally any natural phenomenon for virtually any usefulpurpose could well involve the use of empirical informa-tion obtained through an unpatented means that might have involved transforming matter. Neither Cochrane nor Gottschalk suggests that that fact renders the phenome-non patentable. See Cochrane, supra, at 785 (upholding
13
Cite as: 548 U. S. ____ (2006) BREYER, J., dissenting
process for improving quality of flour by removing impuri-ties with blasts of air); Gottschalk, supra, at 71–73 (reject-ing process for converting numerals to binary formthrough mathematical formula).
Neither does the Federal Circuit’s decision in State Street Bank help respondents. That case does say that a process is patentable if it produces a “useful, concrete, and tangible result.” 149 F. 3d, at 1373. But this Court has never made such a statement and, if taken literally, thestatement would cover instances where this Court has held the contrary. The Court, for example, has invalidated a claim to the use of electromagnetic current for transmit-ting messages over long distances even though it producesa result that seems “useful, concrete, and tangible.” Morse, supra, at 16. Similarly the Court has invalidated apatent setting forth a system for triggering alarm limits inconnection with catalytic conversion despite a similarutility, concreteness, and tangibility. Flook, supra. And the Court has invalidated a patent setting forth a process that transforms, for computer-programming purposes,decimal figures into binary figures—even though theresult would seem useful, concrete, and at least arguably(within the computer’s wiring system) tangible. Gottschalk, supra.
Even were I to assume (purely for argument’s sake) thatclaim 13 meets certain general definitions of process pat-entability, however, it still fails the one at issue here: therequirement that it not amount to a simple natural corre-lation, i.e., a “natural phenomenon.” See Flook, supra, at 588, n. 9 (even assuming patent for improved catalytic converter system meets broad statutory definition of patentable “process,” it is invalid under natural phenome-non doctrine); Diehr, 450 U. S., at 184–185 (explaining that, even if patent meets all other requirements, it mustmeet the natural phenomena requirement as well).
At most, respondents have simply described the natural
14 LABORATORY CORP. OF AMERICA HOLDINGS v.
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BREYER, J., dissenting
law at issue in the abstract patent language of a “process.” But they cannot avoid the fact that the process is no morethan an instruction to read some numbers in light of medical knowledge. Cf. id., at 192 (warning against “al-low[ing] a competent draftsman to evade the recognizedlimitations on the type of subject matter eligible for patentprotection”). One might, of course, reduce the “process” toa series of steps, e.g., Step 1: gather data; Step 2: read a number; Step 3: compare the number with the norm; Step
4: act accordingly. But one can reduce any process to aseries of steps. The question is what those steps embody. And here, aside from the unpatented test, they embody only the correlation between homocysteine and vitamindeficiency that the researchers uncovered. In my view,that correlation is an unpatentable “natural phenomenon,” and I can find nothing in claim 13 that adds anything more of significance.
IV If I am correct in my conclusion in Part III that thepatent is invalid, then special public interest considera-tions reinforce my view that we should decide this case. To fail to do so threatens to leave the medical profession subject to the restrictions imposed by this individual patent and others of its kind. Those restrictions mayinhibit doctors from using their best medical judgment; they may force doctors to spend unnecessary time and energy to enter into license agreements; they may divertresources from the medical task of health care to the legaltask of searching patent files for similar simple correla-tions; they may raise the cost of healthcare while inhibit-ing its effective delivery. See Brief for American Clinical Laboratory Association as Amicus Curiae 8–13. Even if Part III is wrong, however, it still would be valu-able to decide this case. Our doing so would help diminishlegal uncertainty in the area, affecting a “substantial
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number of patent claims.” See Brief for United States as Amicus Curiae 12–14 (filed Aug. 26, 2005). It would per-mit those in the medical profession better to understandthe nature of their legal obligations. It would help Con-gress determine whether legislation is needed. Cf. 35
U. S. C. §287(c) (limiting liability of medical practitioners for performance of certain medical and surgical proce-dures).
In either event, a decision from this generalist Courtcould contribute to the important ongoing debate, among both specialists and generalists, as to whether the patentsystem, as currently administered and enforced, adequatelyreflects the “careful balance” that “the federal patent laws. . . embod[y].” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 146 (1989). See also eBay Inc. v. MercExchange, L. L. C., 547 U. S. ___, ___ (2006) (slip op., at 2) (KENNEDY, J., concurring); FTC, ch. 4, at 1–44; Pollack, The Multiple Unconstitutionality of Business Method Pat-ents: Common Sense, Congressional Consideration, and Constitutional History, 28 Rutgers Computer & Technology
L. J. 61 (2002); Pitofsky, Antitrust and Intellectual Prop-erty: Unresolved Issues at the Heart of the New Economy,16 Berkeley Technology L. J. 535, 542–546 (2001).
For these reasons, I respectfully dissent.

Main Page

2010-01-22T01:25:29Z

Kevin: /* Inventor Eligibility */

<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[http://www.supremecourtus.gov/opinions/05pdf/04-607.pdf]
[[LABORATORY CORPORATION OF AMERICA HOLD-
INGS, DBA LABCORP, PETITIONER v. METABO
-LITE LABORATORIES, INC., ET AL.]]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

Main Page

2010-01-22T01:22:51Z

Kevin: /* Inventor Eligibility */

<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[http://www.supremecourtus.gov/opinions/05pdf/04-607.pdf]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

Main Page

2010-01-22T01:22:02Z

Kevin:

<big>'''Intellectual Property for Engineers'''</big>

== Foundations ==
[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989): full text]]

[[BONITO BOATS, INC. v. THUNDER CRAFT BOATS, INC., 489 U.S. 141 (1989)]]

== Inventor Eligibility ==

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972): full text]]

[[GOTTSCHALK v. BENSON, 409 U.S. 63 (1972)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981): (full text)]]

[[Diamond v. Diehr, 450 U.S. 175 (1981)]]

[[LABORATORY CORPORATION OF AMERICA HOLD-
INGS, DBA LABCORP, PETITIONER v. METABO
-LITE LABORATORIES, INC., ET AL.]]

== Utility ==

== Anticipation ==

== Statutory Bars ==

== Novelty ==

== Nonobviousness ==

== Prior Art ==

Talk:Gottschalk v. Benson, 409 U.S. 63 (1972)

2010-01-18T03:52:14Z

Kevin: /* Kevin */ new section

== Maura ==

The patent sought is on a method of programming a general-purpose digital computer to convert signals from binary-coded decimal form into pure binary form. A procedure for solving a given type of mathematical problem is known as an "algorithm." The procedures set forth in the present claims are of that kind; that is to say, they are a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another. From the generic formulation, programs may be developed as specific applications. [409 U.S. 63, 66]

The Court stated in Mackay Co. v. Radio Corp., 306 U.S. 86, 94 , that "[w]hile a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be." That statement followed the longstanding rule that "[a]n idea of itself is not patentable." Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507. "A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right." Le Roy v. Tatham, 14 How. 156, 175. Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work. As we stated in Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 130 , "He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end." We dealt there with a "product" claim, while the [409 U.S. 63, 68] present case deals with a "process" claim. But we think the same principle applies.
Here the "process" claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.

In The Telephone Cases, 126 U.S. 1, 534 , the Court explained the Morse case as follows: "The effect of that decision was, therefore, that the use of magnetism as a motive power, without regard to the particular process with which it was connected in the patent, could not be claimed, but that its use in that connection could." Bell's invention was the use of electric current to transmit [409 U.S. 63, 69] vocal or other sounds. The claim was not "for the use of a current of electricity in its natural state as it comes from the battery, but for putting a continuous current in a closed circuit into a certain specified condition suited to the transmission of vocal and other sounds, and using it in that condition for that purpose." Ibid. The claim, in other words, was not "one for the use of electricity distinct from the particular process with which it is connected in his patent." Id., at 535. The patent was for that use of electricity "both for the magneto and variable resistance methods." Id., at 538. Bell's claim, in other words, was not one for all telephonic use of electricity.

It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which [409 U.S. 63, 72] means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President's Commission on the Patent System 4 rejected the proposal that these programs be patentable: 5
"Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted.
"The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.
"It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available." [409 U.S. 63, 73]

== Kevin ==

Respondents' method for converting numerical information from binary-coded decimal numbers into pure binary numbers, for use in programming conventional general-purpose digital computers is merely a series of mathematical calculations or mental steps and does not constitute a patentable "process" within the meaning of the Patent Act, 35 U.S.C. 100 (b). Pp. 64-73.
___ C. C. P. A. (Pat.) ___, 441 F.2d 682, reversed.
DOUGLAS, J., delivered the opinion of the Court, in which all Members joined except STEWART, BLACKMUN, and POWELL, JJ., who took no part in the consideration or decision of the case.

It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a "different state or thing." We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. It is said that we have before us a program for a digital computer but extend our holding to programs for analog computers. We have, however, made clear from the start that we deal with a program only for digital computers. It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose. What we come down to in a nutshell is the following.
It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting BCD numerals to pure binary numerals were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which [409 U.S. 63, 72] means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. The President's Commission on the Patent System 4 rejected the proposal that these programs be patentable: 5
"Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further and should not be permitted.
"The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration and the presumption of validity would be all but nonexistent.
"It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection and that copyright protection for programs is presently available." [409 U.S. 63, 73]
If these programs are to be patentable, 6 considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us 7 indicate to us that considered action by the Congress is needed.
Reversed.

Talk:Diamond v. Diehr, 450 U.S. 175 (1981)

2010-01-18T03:46:52Z

Kevin: /* Kevin */ new section

== Kevin ==

From the dissenting opinion of Justice Stevens, Justice Brennan, Justice Marshall, and Justice Blackmon:

The Court of Customs and Patent Appeals has taken the position that, if an application is drafted in a way that discloses an entire process as novel, it defines patentable subject matter even if the only novel element that the inventor claims to have discovered is a new computer program. [Footnote 2/24] The court interpreted Flook in this manner in its opinion in this case. See In re Diehr, 602 F.2d 982, 986-989 (1979). In my judgment, this reading of Flook -- although entirely consistent with the lower court's expansive approach to § 101 during the past 12 years -- trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions.

From the Ruling of the Court:

The corresponding section of [the] existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability."It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any "new and useful" process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection "subject to the conditions and requirements of this title." Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty. [Footnote 13]
Page 450 U. S. 190
The question, therefore, of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter."

(a) For purposes of § 101, a "process" is
"an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. . . . The machinery pointed out as suitable to perform the process may or may not be new or patentable."

"A process, eo nomine, is not made the subject of a patent in our act of congress. It is included under the general term 'useful art.' An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called processes. A new process is usually the result of discovery; a machine, of invention. The arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores, and numerous others are usually carried on by processes, as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing, &c. irrespective of any particular form of machinery or mechanical device. And another may invent a labor-saving machine by which this operation or process may be performed, and each may be entitled to his patent. As, for instance, A has discovered that, by exposing India rubber to a certain degree of heat, in mixture or connection with certain metalic salts, he can produce a valuable product, or manufacture; he is entitled to a patent for his discovery, as a process or improvement in the art, irrespective of any machine or mechanical device. B, on the contrary, may invent a new furnace or stove, or steam apparatus, by which this process may be carried on with much saving of labor and expense of fuel, and he will be entitled to a patent for his machine as an improvement in the art. Yet A could not have a patent for a machine, or B for a process; but each would have a patent for the means or method of producing a certain result, or effect, and not for the result or effect produced. It is for the discovery or invention of some practical method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations."

"That a patent can be granted for a process there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture. A manufacturing process is clearly an art within the meaning of the law. Goodyear's patent was for a process, namely, the process of vulcanizing india rubber by subjecting it to a high degree of heat when mixed with sulphur and a mineral salt. The apparatus for performing the process was not patented, and was not material. The patent pointed out how the process could be effected, and that was deemed sufficient."

[Footnote 12]
It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the "prior art." It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877).

[Footnote 13]
Section 102 is titled "Conditions for patentability; novelty and loss of right to patent," and provides:
"A person shall be entitled to a patent unless --"
"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or"
"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of the application for patent in the United States, or"
"(c) he has abandoned the invention, or"
"(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or"
"(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or"
"(f) he did not himself invent the subject matter sought to be patented, or"
"(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

From the dissenting opinion of Justice Stevens, Justice Brennan, Justice Marshall, and Justice Blackmon:

The Court's decision in this case rests on a misreading of the Diehr and Lutton patent application. Moreover, the Court has compounded its error by ignoring the critical distinction between the character of the subject matter that the inventor claims to be novel -- the § 101 issue -- and the question whether that subject matter is in fact novel -- the § 102 issue.

In Flook, this Court clarified Benson in three significant respects. First, Flook held that the Benson rule of unpatentable subject matter was not limited, as the lower court believed, to claims which wholly preempted an algorithm or amounted to a patent on the algorithm itself. 437 U.S. at 437 U. S. 589-590. Second, the Court made it clear that an improved method of calculation, even when employed as part of a physical process, is not patentable subject matter under § 101. Id. at 437 U. S. 595, n. 18. Finally, the Court explained the correct procedure for analyzing a patent claim employing a mathematical algorithm. Under this procedure, the algorithm is treated for § 101 purposes as though it were a familiar part of the prior art; the claim is then examined to determine whether it discloses "some other inventive concept." Id. at 437 U. S. 591-595. [Footnote 2/22]

Parker v. Flook, 437 U. S. 584 (1978), [Footnote 2/38] and if no other inventive concept is disclosed in the patent application, the question must be answered in the negative. In both Benson and Flook, the parties apparently agreed that the inventor's discovery was properly regarded as an algorithm; the holding that an algorithm was a "law of nature" that could not be
Page 450 U. S. 215
patented therefore determined that those discoveries were not patentable processes within the meaning of § 101
As the Court recognizes today Flook also rejected the argument that patent protection was available if the inventor did not claim a monopoly on every conceivable use of the algorithm, but instead limited his claims by describing a specific post-solution activity -- in that case, setting off an alarm in a catalytic conversion process.

Even the Court does not suggest that the computer program developed by Diehr and Lutton is a patentable discovery. Accordingly, if we treat the program as though it were a familiar part of the prior art -- as well established precedent requires [Footnote 2/41] -- it is absolutely clear that their application contains no claim of patentable invention. Their application was therefore properly rejected under § 101 by the Patent Office and the Board of Appeals.
First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an "algorithm" within the "law of nature" category of unpatentable subject matter has given rise to the concern that almost any process might be so described, and therefore held unpatentable.

In my judgment, today's decision will aggravate the first concern and will not adequately allay the second. I believe both concerns would be better addressed by (1) an unequivocal holding that no program-related invention is a patentable process under § 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term "algorithm" as used in this case, as in Benson and Flook, is synonymous with the term "computer program." [Footnote 2/47] Because
Page 450 U. S. 220
the invention claimed in the patent application at issue in this case makes no contribution to the art that is not entirely dependent upon the utilization of a computer in a familiar process, I would reverse the decision of the Court of Customs and Patent Appeals.

Talk:Diamond v. Diehr, 450 U.S. 175 (1981)

2010-01-18T03:46:25Z

Kevin: Blanked the page

Talk:Diamond v. Diehr, 450 U.S. 175 (1981)

2010-01-18T03:45:38Z

Kevin: Created page with 'From the dissenting opinion of Justice Stevens, Justice Brennan, Justice Marshall, and Justice Blackmon: The Court of Customs and Patent Appeals has taken the position that, if …'

From the dissenting opinion of Justice Stevens, Justice Brennan, Justice Marshall, and Justice Blackmon:

The Court of Customs and Patent Appeals has taken the position that, if an application is drafted in a way that discloses an entire process as novel, it defines patentable subject matter even if the only novel element that the inventor claims to have discovered is a new computer program. [Footnote 2/24] The court interpreted Flook in this manner in its opinion in this case. See In re Diehr, 602 F.2d 982, 986-989 (1979). In my judgment, this reading of Flook -- although entirely consistent with the lower court's expansive approach to § 101 during the past 12 years -- trivializes the holding in Flook, the principle that underlies Benson, and the settled line of authority reviewed in those opinions.

From the Ruling of the Court:

The corresponding section of [the] existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability."It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any "new and useful" process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection "subject to the conditions and requirements of this title." Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty. [Footnote 13]
Page 450 U. S. 190
The question, therefore, of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter."

(a) For purposes of § 101, a "process" is
"an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. . . . The machinery pointed out as suitable to perform the process may or may not be new or patentable."

"A process, eo nomine, is not made the subject of a patent in our act of congress. It is included under the general term 'useful art.' An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations are called processes. A new process is usually the result of discovery; a machine, of invention. The arts of tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores, and numerous others are usually carried on by processes, as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing, &c. irrespective of any particular form of machinery or mechanical device. And another may invent a labor-saving machine by which this operation or process may be performed, and each may be entitled to his patent. As, for instance, A has discovered that, by exposing India rubber to a certain degree of heat, in mixture or connection with certain metalic salts, he can produce a valuable product, or manufacture; he is entitled to a patent for his discovery, as a process or improvement in the art, irrespective of any machine or mechanical device. B, on the contrary, may invent a new furnace or stove, or steam apparatus, by which this process may be carried on with much saving of labor and expense of fuel, and he will be entitled to a patent for his machine as an improvement in the art. Yet A could not have a patent for a machine, or B for a process; but each would have a patent for the means or method of producing a certain result, or effect, and not for the result or effect produced. It is for the discovery or invention of some practical method or means of producing a beneficial result or effect that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and it will include all methods or means which are not effected by mechanism or mechanical combinations."

"That a patent can be granted for a process there can be no doubt. The patent law is not confined to new machines and new compositions of matter, but extends to any new and useful art or manufacture. A manufacturing process is clearly an art within the meaning of the law. Goodyear's patent was for a process, namely, the process of vulcanizing india rubber by subjecting it to a high degree of heat when mixed with sulphur and a mineral salt. The apparatus for performing the process was not patented, and was not material. The patent pointed out how the process could be effected, and that was deemed sufficient."

[Footnote 12]
It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook, which noted that a mathematical algorithm must be assumed to be within the "prior art." It is from this language that the petitioner premises his argument that, if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable, because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e.g., Gottschalk v. Benson, supra; and Cochrane v. Deener, 94 U. S. 780 (1877).

[Footnote 13]
Section 102 is titled "Conditions for patentability; novelty and loss of right to patent," and provides:
"A person shall be entitled to a patent unless --"
"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or"
"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of the application for patent in the United States, or"
"(c) he has abandoned the invention, or"
"(d) the invention was first patented or caused to be patented, or was the subject of an inventor's certificate, by the applicant or his legal representatives or assigns in a foreign country prior to the date of the application for patent in this country on an application for patent or inventor's certificate filed more than twelve months before the filing of the application in the United States, or"
"(e) the invention was described in a patent granted on an application for patent by another filed in the United States before the invention thereof by the applicant for patent, or on an international application by another who has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention thereof by the applicant for patent, or"
"(f) he did not himself invent the subject matter sought to be patented, or"
"(g) before the applicant's invention thereof the invention was made in this country by another who had not abandoned, suppressed, or concealed it. In determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other."

From the dissenting opinion of Justice Stevens, Justice Brennan, Justice Marshall, and Justice Blackmon:

The Court's decision in this case rests on a misreading of the Diehr and Lutton patent application. Moreover, the Court has compounded its error by ignoring the critical distinction between the character of the subject matter that the inventor claims to be novel -- the § 101 issue -- and the question whether that subject matter is in fact novel -- the § 102 issue.

In Flook, this Court clarified Benson in three significant respects. First, Flook held that the Benson rule of unpatentable subject matter was not limited, as the lower court believed, to claims which wholly preempted an algorithm or amounted to a patent on the algorithm itself. 437 U.S. at 437 U. S. 589-590. Second, the Court made it clear that an improved method of calculation, even when employed as part of a physical process, is not patentable subject matter under § 101. Id. at 437 U. S. 595, n. 18. Finally, the Court explained the correct procedure for analyzing a patent claim employing a mathematical algorithm. Under this procedure, the algorithm is treated for § 101 purposes as though it were a familiar part of the prior art; the claim is then examined to determine whether it discloses "some other inventive concept." Id. at 437 U. S. 591-595. [Footnote 2/22]

Parker v. Flook, 437 U. S. 584 (1978), [Footnote 2/38] and if no other inventive concept is disclosed in the patent application, the question must be answered in the negative. In both Benson and Flook, the parties apparently agreed that the inventor's discovery was properly regarded as an algorithm; the holding that an algorithm was a "law of nature" that could not be
Page 450 U. S. 215
patented therefore determined that those discoveries were not patentable processes within the meaning of § 101
As the Court recognizes today Flook also rejected the argument that patent protection was available if the inventor did not claim a monopoly on every conceivable use of the algorithm, but instead limited his claims by describing a specific post-solution activity -- in that case, setting off an alarm in a catalytic conversion process.

Even the Court does not suggest that the computer program developed by Diehr and Lutton is a patentable discovery. Accordingly, if we treat the program as though it were a familiar part of the prior art -- as well established precedent requires [Footnote 2/41] -- it is absolutely clear that their application contains no claim of patentable invention. Their application was therefore properly rejected under § 101 by the Patent Office and the Board of Appeals.
First, the cases considering the patentability of program-related inventions do not establish rules that enable a conscientious patent lawyer to determine with a fair degree of accuracy which, if any, program-related inventions will be patentable. Second, the inclusion of the ambiguous concept of an "algorithm" within the "law of nature" category of unpatentable subject matter has given rise to the concern that almost any process might be so described, and therefore held unpatentable.

In my judgment, today's decision will aggravate the first concern and will not adequately allay the second. I believe both concerns would be better addressed by (1) an unequivocal holding that no program-related invention is a patentable process under § 101 unless it makes a contribution to the art that is not dependent entirely on the utilization of a computer, and (2) an unequivocal explanation that the term "algorithm" as used in this case, as in Benson and Flook, is synonymous with the term "computer program." [Footnote 2/47] Because
Page 450 U. S. 220
the invention claimed in the patent application at issue in this case makes no contribution to the art that is not entirely dependent upon the utilization of a computer in a familiar process, I would reverse the decision of the Court of Customs and Patent Appeals.

Talk:Bonito Boats v. Thunder Craft, 489 U.S. 141 (1989)

2010-01-18T02:53:48Z

Kevin: /* Kevin */ new section

== Goodwine ==

The facts of this case do not matter too much. This case contains a good discussion of the legal basis for and economic rationale for the US patent system.

Students in the course should add sections from the case that talk about the relevant point of interest. Of course it depends heavily on the case, but generally these quotes should be between about a paragraph and 3 pages in length.

== Maura ==

(d) The Patent and Copyright Clauses of the Federal Constitution do not by their own force, or by negative implication, deprive the States of the power to adopt rules to promote intellectual creation within their own jurisdictions where Congress has left the field free of federal regulation. Goldstein v. California, 412 U. S. 546. Even as to design and utilitarian conceptions within the subject matter of the patent laws, the States may place limited regulations on the exploitation of unpatented ideas to prevent consumer confusion as to source or the tortious appropriation of trade secrets. Both the law of unfair competition and state trade secret law have coexisted harmoniously with federal patent protection
Page 489 U. S. 143
for almost 200 years, and Congress has demonstrated its full awareness of the operation of state law in these areas without any indication of disapproval. Silkwood v. Kerr-McGee Corp., 464 U. S. 238.

The Patent Clause itself reflects a balance between the need to encourage innovation and the avoidance of monopolies which stifle competition without any concomitant advance in the "Progress of Science and useful Arts." As we have noted in the past, the Clause contains both a grant of power and certain limitations upon the exercise of that power. Congress may not create patent monopolies of unlimited duration, nor may it
"authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available."
Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 383 U. S. 6 (1966).
From their inception, the federal patent laws have embodied a careful balance between the need to promote innovation and the recognition that imitation and refinement through imitation are both necessary to invention itself, and the very lifeblood of a competitive economy. Soon after the adoption of the Constitution, the First Congress enacted the Patent Act of 1790, which allowed the grant of a limited monopoly of 14 years to any applicant that
"hath . . . invented or discovered
Page 489 U. S. 147
any useful art, manufacture, . . . or device, or any improvement therein not before known or used."
1 Stat. 109, 110. In addition to novelty, the 1790 Act required that the invention be "sufficiently useful and important" to merit the 14-year right of exclusion. Ibid. Section 2 of the Act required that the patentee deposit with the Secretary of State a specification and, if possible, a model of the new invention,
"which specification shall be so particular, and said models so exact, as not only to distinguish the invention or discovery from other things before known and used, but also to enable a workman or other person skilled in the art or manufacture . . . to make, construct, or use the same, to the end that the public may have the full benefit thereof, after the expiration of the patent term."
Ibid.

Id. at 322. Thus, from the outset, federal patent law has been about the difficult business
"of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those which are not."
13 Writings of Thomas Jefferson, supra, at 335.
Today's patent statute is remarkably similar to the law as known to Jefferson in 1793. Protection is offered to
"[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."
5 U.S.C. § 101. Since 1842, Congress has also made protection available for "any new, original and ornamental design for an article of manufacture." 35 U.S.C. § 171. To qualify for protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability. The novelty requirement of patentability is presently expressed in 35 U.S.C. §§ 102(a) and (b), which provide:
"A person shall be entitled to a patent unless -- "
"(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or"
"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the date of application for patent in the United States. . . ."
Sections 102(a) and (b) operate in tandem to exclude from consideration for patent protection knowledge that is already available to the public. They express a congressional determination that the creation of a monopoly in such information would not only serve no socially useful purpose, but would in fact injure the public by removing existing knowledge from public use. From the Patent Act of 1790 to the present day,
Page 489 U. S. 149
the public sale of an unpatented article has acted as a complete bar to federal protection of the idea embodied in the article thus placed in public commerce.

In addition to the requirements of novelty and utility, the federal patent law has long required that an innovation not be
Page 489 U. S. 150
anticipated by the prior art in the field. Even if a particular combination of elements is "novel" in the literal sense of the term, it will not qualify for federal patent protection if its contours are so traced by the existing technology in the field that the "improvement is the work of the skillful mechanic, not that of the inventor." @ 52 U. S. 267 (1851). In 1952, Congress codified this judicially developed requirement in 35 U.S.C. § 103, which refuses protection to new developments where
"the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person of ordinary skill in the art to which said subject matter pertains."
The nonobviousness requirement extends the field of unpatentable material beyond that which is known to the public under § 102, to include that which could readily be deduced from publicly available material by a person of ordinary skill in the pertinent field of endeavor. See Graham, 383 U.S. at 383 U. S. 15. Taken together, the novelty and nonobviousness requirements express a congressional determination that the purposes behind the Patent Clause are best served by free competition and exploitation of that which is either already available to the public, or that which may be readily discerned from publicly available material. See Aronson v. Quick Point Pencil Co., 440 U. S. 257, 440 U. S. 262 (1979) ("[T]he stringent requirements for patent protection seek to ensure that ideas in the public domain remain there for the use of the public").
The applicant whose invention satisfies the requirements of novelty, nonobviousness, and utility, and who is willing to reveal to the public the substance of his discovery and "the best mode . . . of carrying out his invention," 35 U.S.C. § 112, is granted "the right to exclude others from making, using, or selling the invention throughout the United States," for a period of 17 years. 35 U.S.C. § 154. The federal patent system thus embodies a carefully crafted bargain for encouraging
Page 489 U. S. 151
the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years.
"[The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use."
United States v. Dubilier Condenser Corp., 289 U. S. 178, 289 U. S. 186-187 (1933).
The attractiveness of such a bargain, and its effectiveness in inducing creative effort and disclosure of the results of that effort, depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations. The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception. Moreover, the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available. To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. Cf. Arkansas Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375, 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area may imply an authoritative federal determination that the area is best left unregulated,
Page 489 U. S. 152
and, in that event, would have as much preemptive force as a decision to regulate") (emphasis in original).

The prospect of all 50 States' establishing similar protections for preferred industries without the rigorous requirements of patentability prescribed by Congress could pose a substantial threat to the patent system's ability to accomplish its mission of promoting progress in the useful arts.
Finally, allowing the States to create patent-like rights in various products in public circulation would lead to administrative problems of no small dimension. The federal patent scheme provides a basis for the public to ascertain the status of the intellectual property embodied in any article in general circulation.

One of the fundamental purposes behind the Patent and Copyright Clauses of the Constitution was to promote national uniformity in the realm of intellectual property. See The Federalist No. 43, p. 309 (B. Wright ed.1961). Since the Patent Act of 1800, Congress has lodged exclusive jurisdiction of actions "arising under" the patent laws in the federal courts, thus allowing for the development of a uniform body of law in resolving the constant tension between private right and public access. See 28 U.S.C. § 1338; see also Chisum, The Allocation of Jurisdiction Between State and Federal Courts in Patent Litigation, 46 Wash.L.Rev. 633, 636 (1971). Recently, Congress conferred exclusive jurisdiction of all patent appeals on the Court of Appeals for the Federal Circuit, in order to "provide nationwide uniformity in patent law." H.R.Rep. No. 97-312, p. 20 (1981).

"It is difficult to conceive of a more effective method of creating substantial property rights in an intellectual creation than to eliminate the most efficient method for its exploitation."

For almost 100 years, it has been well established that, in the case of an expired patent, the federal patent laws do create a federal right to "copy and to use."

== Kevin ==

The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years. "[The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use."
The attractiveness of such a bargain, and its effectiveness in inducing creative effort and disclosure of the results of that effort, depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations. The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception. Moreover, the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available.
To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. Cf. Arkansas Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375, 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area may imply an authoritative federal determination that the area is best left unregulated, and, in that event, would have as much preemptive force as a decision to regulate") (emphasis in original). Thus our past decisions have made clear that state regulation of intellectual property must yield to the extent that it clashes with the balance struck by Congress in our patent laws. The tension between the desire to freely exploit the full potential of our inventive resources and the need to create an incentive to deploy those resources is constant. Where it is clear how the patent laws strike that balance in a particular circumstance, that is not a judgment the States may second-guess.
The prospect of all 50 States' establishing similar protections for preferred industries without the rigorous requirements of patentability prescribed by Congress could pose a substantial threat to the patent system's ability to accomplish its mission of promoting progress in the useful arts.
Finally, allowing the States to create patent-like rights in various products in public circulation would lead to administrative problems of no small dimension. The federal patent scheme provides a basis for the public to ascertain the status of the intellectual property embodied in any article in general circulation.
Through the application process, detailed information concerning the claims of the patent holder is compiled in a central location. See 35 U.S.C. §§ 111-114. The availability of damages in an infringement action is made contingent upon affixing a notice of patent to the protected article. 35 U.S.C. § 287. The notice requirement is designed "for the information of the public," Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U. S. 387, 297 U. S. 397 (1936), and provides a ready means of discerning the status of the intellectual property embodied in an article of manufacture or design. The public may rely upon the lack of notice in exploiting shapes and designs accessible to all.

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2010-01-18T02:53:15Z

Kevin: /* Kevin */

== Courtney ==

In September, 1976, petitioner Bonito Boats, Inc. (Bonito), a Florida corporation, developed a hull design for a fiberglass recreational boat which it marketed under the trade name Bonito Boat Model 5VBR. App. 5. Designing the boat hull required substantial effort on the part of Bonito. A set of engineering drawings was prepared, from which a hardwood model was created. The hardwood model was then sprayed with fiberglass to create a mold, which then served to produce the finished fiberglass boats for sale. The 5VBR was placed on the market sometime in September, 1976. There is no indication in the record that a patent application was ever filed for protection of the utilitarian or design aspects of the hull, or for the process by which the hull was manufactured. The 5VBR was favorably received by the boating public, and "a broad interstate market" developed for its sale.

In this case, the Bonito 5VBR fiberglass hull has been freely exposed to the public for a period in excess of six years. For purposes of federal law, it stands in the same stead as an item for which a patent has expired or been denied: it is unpatented and unpatentable. See 35 U.S.C. § 102(b). Whether because of a determination of unpatentability or other commercial concerns, petitioner chose to expose its hull design to the public in the marketplace, eschewing the bargain held out by the federal patent system of disclosure in exchange.for exclusive use. Yet, the Florida statute allows petitioner to reassert a substantial property right in the idea, thereby constricting the spectrum of useful public knowledge. Moreover, it does so without the careful protections of high standards of innovation and limited monopoly contained in the federal scheme. We think it clear that such protection conflicts with the federal policy "that all ideas in general circulation be dedicated to the common good Page 489 U. S. 160 unless they are protected by a valid patent." Lear, Inc. v. Adkins, 395 U.S. at 395 U. S. 668.

That the Florida statute does not remove all means of reproduction and sale does not eliminate the conflict with the federal scheme. See Kellogg, 305 U.S. at 395 U. S. 122. In essence, the Florida law prohibits the entire public from engaging in a form of reverse engineering of a product in the public domain. This is clearly one of the rights vested in the federal patent holder, but has never been a part of state protection under the law of unfair competition or trade secrets. See Kewanee, 416 U.S. at 416 U. S. 476 ("A trade secret law, however, does not offer protection against discovery by . . . so-called reverse engineering, that is by starting with the known product and working backward to divine the process which aided in its development or manufacture"); see also Chicago Lock Co. v. Fanberg, 676 F.2d 400, 405 (CA9 1982) ("A lock purchaser's own reverse-engineering of his own lock, and subsequent publication of the serial number-key code correlation, is an example of the independent invention and reverse engineering expressly allowed by trade secret doctrine"). The duplication of boat hulls and their component parts may be an essential part of innovation in the field of hydrodynamic design. Variations as to size and combination of various elements may lead to significant advances in the field. Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology. If Florida may prohibit this particular method of study and recomposition of an unpatented article, we fail to see the principle that would prohibit a State from banning the use of chromatography in the reconstitution of unpatented chemical compounds, or the use of robotics in the duplication of machinery in the public domain.

The Florida statute is aimed directly at the promotion of intellectual creation by substantially restricting the public's ability to exploit ideas that the patent system mandates shall be free for all to use. Like the interpretation of Illinois unfair competition law in Sears and Compco, the Florida statute represents a break with the tradition of peaceful coexistence between state market regulation and federal patent policy. The Florida law substantially restricts the public's ability to exploit an unpatented design in general circulation, raising the specter of state-created monopolies in a host of useful shapes and processes for which patent protection has been denied or is otherwise unobtainable. It thus enters a field of regulation which the patent laws have reserved to Congress. The patent statute's careful balance between public right and private monopoly to promote certain creative activity is a "scheme of federal regulation . . . so pervasive as to make reasonable the inference that Congress left no room for the States to supplement it." Rice v. Santa Fe Elevator Corp., 331 U. S. 218, 331 U. S. 230 (1947).

Congress has considered extending various forms of limited protection to industrial design either through the copyright laws or by relaxing the restrictions on the availability of design patents. See generally Brown, Design Protection: An Overview, 34 UCLA L.Rev. 1341 (1987). Congress explicitly refused to take this step in the copyright laws, see 17 U.S.C. § 101; H.R.Rep. No. 94-1476, p. 55 (1976), and, Page 489 U. S. 168 despite sustained criticism for a number of years, it has declined to alter the patent protections presently available for industrial design. See Report of the President's Commission on the Patent System, S. Doc. No. 5, 90th Cong., 1st Sess., 20-21 (1967); Lindgren, The Sanctity of the Design Patent: Illusion or Reality?, 10 Okla.City L.Rev.195 (1985), It is for Congress to determine if the present system of design and utility patents is ineffectual in promoting the useful arts in the context of industrial design. By offering patent-like protection for ideas deemed unprotected under the present federal scheme, the Florida statute conflicts with the "strong federal policy favoring free competition in ideas which do not merit patent protection." Lear, Inc., 395 U.S. at 395 U. S. 656. We therefore agree with the majority of the Florida Supreme Court that the Florida statute is preempted by the Supremacy Clause, and the judgment of that court is hereby affirmed.

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2010-01-15T04:32:32Z

Kevin: /* Kevin */

== Kevin ==
The federal patent system thus embodies a carefully crafted bargain for encouraging the creation and disclosure of new, useful, and nonobvious advances in technology and design in return for the exclusive right to practice the invention for a period of years. "[The inventor] may keep his invention secret and reap its fruits indefinitely. In consideration of its disclosure and the consequent benefit to the community, the patent is granted. An exclusive enjoyment is guaranteed him for seventeen years, but, upon expiration of that period, the knowledge of the invention inures to the people, who are thus enabled without restriction to practice it and profit by its use."
The attractiveness of such a bargain, and its effectiveness in inducing creative effort and disclosure of the results of that effort, depend almost entirely on a backdrop of free competition in the exploitation of unpatented designs and innovations. The novelty and nonobviousness requirements of patentability embody a congressional understanding, implicit in the Patent Clause itself, that free exploitation of ideas will be the rule, to which the protection of a federal patent is the exception. Moreover, the ultimate goal of the patent system is to bring new designs and technologies into the public domain through disclosure. State law protection for techniques and designs whose disclosure has already been induced by market rewards may conflict with the very purpose of the patent laws by decreasing the range of ideas available as the building blocks of further innovation. The offer of federal protection from competitive exploitation of intellectual property would be rendered meaningless in a world where substantially similar state law protections were readily available.
To a limited extent, the federal patent laws must determine not only what is protected, but also what is free for all to use. Cf. Arkansas Electric Cooperative Corp. v. Arkansas Public Service Comm'n, 461 U. S. 375, 461 U. S. 384 (1983) ("[A] federal decision to forgo regulation in a given area may imply an authoritative federal determination that the area is best left unregulated, and, in that event, would have as much preemptive force as a decision to regulate") (emphasis in original). Thus our past decisions have made clear that state regulation of intellectual property must yield to the extent that it clashes with the balance struck by Congress in our patent laws. The tension between the desire to freely exploit the full potential of our inventive resources and the need to create an incentive to deploy those resources is constant. Where it is clear how the patent laws strike that balance in a particular circumstance, that is not a judgment the States may second-guess.
The prospect of all 50 States' establishing similar protections for preferred industries without the rigorous requirements of patentability prescribed by Congress could pose a substantial threat to the patent system's ability to accomplish its mission of promoting progress in the useful arts.
Finally, allowing the States to create patent-like rights in various products in public circulation would lead to administrative problems of no small dimension. The federal patent scheme provides a basis for the public to ascertain the status of the intellectual property embodied in any article in general circulation.
Through the application process, detailed information concerning the claims of the patent holder is compiled in a central location. See 35 U.S.C. §§ 111-114. The availability of damages in an infringement action is made contingent upon affixing a notice of patent to the protected article. 35 U.S.C. § 287. The notice requirement is designed "for the information of the public," Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 297 U. S. 387, 297 U. S. 397 (1936), and provides a ready means of discerning the status of the intellectual property embodied in an article of manufacture or design. The public may rely upon the lack of notice in exploiting shapes and designs accessible to all.